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Jason A. Engel

Fax +1.312.827.8145

Jason A. Engel is a partner at the firm’s Chicago office. He is a member of the post-grant patents practice group, but has a broad range of experience over his career. Mr. Engel is a registered patent lawyer with an undergraduate degree in electrical engineering. He concentrates his practice on the litigation of intellectual property matters with a focus on patent litigation and patent office litigation. He has substantial experience before the Patent Trial and Appeal Board, in federal district courts across the country, and with Section 337 investigations in the U.S. International Trade Commission.

Mr. Engel is experienced in all aspects of litigation, including discovery, motion practice, claim construction, and trial practice. He has conducted examination of witnesses at trial, argued motions, and taken and defended depositions of fact and expert witnesses. He is familiar with the Patent Local Rules for the Northern District of Illinois, the Northern District of California, the District of New Jersey, and the Eastern and Southern Districts of Texas.

Mr. Engel also has significant experience with post-grant proceedings, including in the context of overall trial strategy. He has advised clients on a number of proceedings including inter partes review, post-grant review, and ex parte reexamination, and has successfully argued such matters before the Patent Trial and Appeal Board and the U.S. Court of Appeals for the Federal Circuit.

Mr. Engel also regularly advises clients on non-litigation matters, including prosecution, licensing, and clearance matters. In this regard, Mr. Engel is trusted advisor with respect to clearance opinion matters and licensing transactions.

Professional Background

Previously, Mr. Engel worked as a computer consultant developing informational databases for Toyota Motor Manufacturing, Kettering Radiologist Imaging Center, and Dayton Power & Light. He also created the University of Dayton’s first website.

Mr. Engel is an Adjunct Professor of Law at the Chicago-Kent College of Law where he co-founded and supports the IP Patent Clinic.

Professional/Civic Activities

  • PTAB Bar Association
  • Trial counsel for Eastman Kodak Company in International Trade Commission case against Apple, Inc. involving digital cameras and image processing technology. Administrative Law Judge Robert K. Rogers issued an Initial Determination finding: (i) Kodak did not infringe either of Apple's '911 or '964 Patents; (ii) Apple's '911 Patent was invalid; and (ii) Apple lacked the required domestic industry for the '964 Patent. The International Trade Commission declined to review the Initial Determination. At the close of the evidentiary hearing ALJ Rogers commented: "If I were going to hold out a hearing for an example of how to go about this, it would be the one you just put on because you have saved a lot of time by avoiding unnecessary bickering and by focusing on what the real issues in the case were as opposed to going far afield. So thank you for that."
  • Trial counsel for Eastman Kodak Company in a District Court case against Apple, Inc. involving technology related to ink-jet printers, digital camera user interfaces and power management, and serial communication interfaces.
  • Counsel for Nestlé USA, Inc., Safeway, Inc., H.J. Heinz Company, The Schwan Food Company, and Graphic Packaging International, Inc. in patent false marking qui tam action (N.D. Ill). Case dismissed “pursuant to Rule 12(b)(6) and Rule 9(b) for failing to state a claim.”Trial counsel for Stratos Lightwave, Inc. in patent infringement jury trial (D. Del). Obtained jury verdict of infringement on all 13 asserted claims of 6 patents related to optoelectronic transceivers.
  • Appellate counsel and lead trial counsel for Nalco Company in preliminary injunction hearing (S.D. Tex.) seeking to prevent it from using a crude oil desalting process allegedly invented and patented by Baker Hughes Inc. Conducted cross-examination of lead inventor, and direct examination of economic and technical experts. Case has been stayed pending inter partes reexamination of the patent at issue. All of the claims asserted in the district court case were rejected in the inter partes reexamination through the Right of Appeal Notice.
  • Lead trial counsel for Nalco Company in patent infringement action (D. N.J.) brought by Lonza Inc. related to deposit control in papermaking processes. Conducted claim construction hearing and fact and expert depositions. Case settled during expert discovery.
  • Trial counsel for Westinghouse Air Brake Technologies Corporation (“Wabtec”), Standard Car Truck Company, and Tianrui Group Foundry Company, Ltd. in patent infringement action (S.D. Ill) brought by Amsted Industries Inc. related to railway car sideframes and bolsters. Case settled after service of invalidity contentions.
  • Trial counsel for Hexagon Metrology, Inc. and TESA SA (N.D. Ill) in successfully fending off patent holder's attempt to preliminarily enjoin probing system for coordinate measuring machines. Conducted direct examination of technical expert on issues related to patent invalidity. Case settled thereafter.
  • Counsel for Stratos Lightwave, Inc. in patent infringement case in the Northern District of California against Infineon Techs. N. Am. Corp. and Infineon Techs. AG. Case settled at mediation following claim construction ruling.
  • Trial counsel for Robotic FX, Inc. and Jameel Ahed in defending against preliminary injunction (D. Mass.) sought by iRobot Corp., alleging theft of trade secrets related to robotic technology. Conducted cross-examination of iRobot's lead witness which the Court's opinion, denying the majority of the relief sought by iRobot, recognized as demonstrating "flaws" in iRobot's case. Case settled thereafter.
  • Counsel for Mentice SA and Mentice AB in patent infringement case (E.D. Tex.) involving medical simulators. Case successfully transferred to the Northern District of Ohio following Volkswagen II and TS Tech cases.
  • Counsel for Wm. Wrigley Jr. Co. in patent infringement case (N.D. Ill) against Cadbury Adams USA LLC related to confectionery technology. As lead counsel at claim construction hearing, secured favorable "specification disclaimer" ruling against Cadbury's patent, leading to summary judgment of non-infringement both literally and under the doctrine of equivalents.