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Jason A. Engel  Partner
Chicago  +1.312.807.4236
Fax +1.312.827.8145
jason.engel@klgates.com Add to Outlook Contacts


Areas of Practice Representative Experience Professional Background Professional/Civic Activities Court Admissions Bar Admissions Education

Areas of Practice

Jason A. Engel concentrates his practice in patent-related issues including litigation, prosecution, licensing, due diligence and counseling.

Mr. Engel's 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 California and the Eastern District of Texas, and has been integral in formulating trial strategies in patent, trade secret, trademark and trade dress cases.

His prosecution experience includes systems and methods of doing business, electrical and mechanical devices, and a variety of Internet-related work.

Representative Experience
  • 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 Co. 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. Federal Circuit issued an emergency stay and thereafter vacated the injunction
  • Trial counsel for Hexagon Metrology, Inc. and TESA SA (N.D. Ill) is 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.
  • Trial 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.

Professional Background

Previously, Mr. Engel worked as a computer consultant developing informational databases for Toyota Motor Manufacturing, Kettering Radiologist Imaging Center and Dayton Power and Light. As a technical consultant to the University of Dayton, he implemented the University'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 Intellectual Property Law Clinic.

Professional/Civic Activities
  • American Bar Association
  • Intellectual Property Law Association of Chicago

Court Admissions
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Northern District of Illinois

Bar Admissions
  • Bar of Illinois
  • U.S. Patent & Trademark Office
Education
  • J.D., University of Dayton School of Law (2001) (cum laude)
  • B.S., University of Dayton (1998)

PRACTICES & INDUSTRIES
IP Litigation
Licensing and E-merging Commerce
Patents, Trademarks, Copyrights & Related Transactions
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