McAndrews, Held & Malloy

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	Thomas J. Wimbiscus Shareholder Email. twimbiscus@mcandrews-ip.com Tel. (312) 775-8000 Education University of Illinois, B.S. Chemistry, with honors, 1982 University of Illinois, J.D., magna cum laude, 1985 Bar Admissions Admitted to practice before various U.S. District Courts, various Appellate Courts including the U.S. Court of Appeals for the Federal Circuit, and the U.S. Supreme Court. Registered to practice before the U.S. Patent and Trademark Office. Professional Experience Thomas J. Wimbiscus has over twenty years of experience and practices in all areas of intellectual property litigation, as well as the acquisition and management of patent, trademark, and copyright protection. He was named as “recommended” intellectual property (patent) counsel in Chicago by an independent, global survey conducted by Practical Law Company (PLC Global Counsel 3000, Choose Your Counsel Wisely (7th, 8th, 9th, 10th, 11th, 12th and 13th eds.) (now called PLC Which Lawyer? Yearbook)) for the years 2002 – 2008. He was also named as a prominent practitioner by the Practical Law Company in PLC’s Cross-Border IP in Business Transactions Handbook for 2008. The Practical Law Company writes that Tom is “a well respected specialist with an emphasis on commercial and contentious IP issues, most notably in patents, trademarks and trade secrets.” Tom was also named as both a “Best Attorney” and a “Leading Lawyer” (2004 - 2008, awarded to fewer than five percent of licensed Illinois lawyers) by independent survey. He has worked in such diverse technologies as semiconductors for cellular telephones and other technologies; catalytic oil refining; polyurethane, surfactant, and other technologies in the chemical arts; alternative fuels (including biodiesel); biotechnologies including industrial enzymes, genetically modified nutritional supplements, and other pharmaceuticals; internet communications; satellite enabled global telecommunication systems; contact lenses; ophthalmic surgical controllers; organoclay and other chemical processing; papermaking machinery; implantable cardiac defibrillators and pacemakers; balloon angioplasty catheters; wireless printers; and electronic gaming products. In addition to numerous patent matters, Tom also has substantial involvement in litigation involving areas of antitrust, trade secret, trademark and trade dress, copyrights, as well as a successful RICO case of first impression. Tom has had substantial responsibilities on the following: • Co-lead counsel, In re Certain Processes for the Manufacture of R-134a (otherwise known as 1,1,1,2-tetrafluoroethane), Int’l Trade Comm’n Inv. No. 337-TA-623; patent infringement; representing the respondents SinoChem Modern Environmental Protection Chemicals (Xi’an) Co., Ltd. and SinoChem Ningbo Ltd. of China, case pending. • Co-trial counsel in multiple patent litigations (involving eight patents) on behalf of Broadcom Corp. against Qualcomm, Inc. relating to semiconductors for cellular telephones. (Cases settled.) • Lead trial counsel in Moore v. Broadcom Corporation et al, action for correction of inventorship and unjust enrichment, victory on summary judgment granted for client (Defendants). • Co-trial counsel at four-week jury trial resulting in a patent infringement award of over $80 million with a finding of willful infringement (reversed in part and remanded). • Primary trial counsel responsible for patent infringement victory involving payments of $9 million plus future royalties. Defendant Nol-tec Systems stipulated to validity and infringement and is enjoined from further infringement with respect to the subject technology. • Lead trial counsel in a Lanham Act victory involving claims of trade dress infringement and passing off, affirmed by the U.S. Court of Appeals for the 7th Circuit. Tom was retained as new lead counsel after the district court had already found liability and awarded treble damages against the client, defendant. After first persuading the district court to rescind its prior award of treble damages (and deny a request for punitive damages), Wimbiscus, along with partner Alex Menchaca, successfully persuaded the district court to reverse its prior award of liability - - and later award attorney's fees to their client defendant. • Co-counsel in patent infringement action filed on behalf of Weyerhaeuser Company relating to superabsorbent technology. • Defense of damages claim on behalf of a major medical device manufacturer in eight-week jury trial. Tom was the lawyer primarily responsible for the damages issues in this case. (The plaintiff reduced its (four patent) multi-hundred million dollar claim by 50% before trial; the surviving claim was later drastically reduced by jury award.) • Supporting counsel in trials resulting in jury verdicts of $14.6 million, $17.2 million, and $7.9 million for patent infringement relating to papermaking machinery. • Injunction on behalf of patent holder relating to wireless printing technology. • Supporting counsel in defense of preliminary injunction proceeding brought by major sporting goods manufacturer for claim of misappropriation of trade secrets. • Supporting counsel in defense of preliminary injunction proceeding and appeal proceeding involving patents for plastic packaging materials. • Summary judgment of noninfringement and successful appeal on patent relating to commercial gaming technology. • Jury verdict of $2.8 million, including four-week trial (and appeal), for breach of fiduciary duty, believed to represent the then highest such verdict in the State of Illinois. Tom's litigation experience includes all phases of litigation, including participation in patent and other trials, Markman hearings, TRO and preliminary injunction proceedings, and appellate practice. His experience in the acquisition and maintenance of intellectual property encompasses patents, trademarks, and copyrights. Tom has lectured on the subject of patent law and licensing at the Licensing Executive Society. Back to Top