CONTACT INFORMATION mjschmitt@michaelbest.com T 312.596.5828 F 312.222.0818 vcard Chicago Two Prudential Plaza, 180 North Stetson Avenue Suite 2000 60601 LEGAL ASSISTANT Lois T. Spurlock T 312.222.0800 x36228 RELATED LEGAL SERVICES Intellectual Property Litigation Copyright Intellectual Property Patent Prosecution & Counseling Life Sciences and Chemical Mechanical Patent Post-Grant Practice Trade Secret Protection and Non- Competition Marshall J. Schmitt MAIN BIO EXPERIENCE SPEECHES PUBLICATIONS NEWS Marshall Schmitt is a partner in the Intellectual Property Practice Group and Deputy Chair of the firm s IP Litigation practice. Mr. Schmitt s practice focuses on resolving disputes regarding scientific issues and counseling clients in chemical and biotechnology matters. His practice includes helping clients develop strategies for obtaining and effectively enforcing intellectual property rights. He has significant experience in disputes involving diverse subject matters including: patent; trade secrets; trademark; unfair competition; copyright; antitrust; False Claims Act; government contracts (including terminations for default); cable television franchising; insurance coverage; dissolution of partnerships and professional corporations; and internal investigations. Mr. Schmitt also has extensive experience in criminal matters, having represented indigent clients pro bono, including several death penalty cases. Mr. Schmitt s trial experience spans a wide range of civil and criminal matters. He has participated in major trials in the Circuit Court of Cook County, Illinois; the United States District Courts for the Northern District of Illinois, the Southern District of New York, the Eastern District of Missouri; and the Eastern and Western Districts of Michigan, the Western District of Wisconsin, the Middle District of North Carolina, and the United States Court of Federal Claims. He also has litigated cases in several other United States District Courts, including the Eastern and Western Districts of Michigan and the Northern District of California, and in the California Superior Courts (Los Angeles and San Diego). He has argued appeals before the United States Court of Appeals for the Seventh Circuit, the California Court of Appeals, and the Wisconsin Court of Appeals and participated in other appeals before the Illinois Appellate Court, the United States Courts of Appeals for the Ninth and Federal Circuits, and the United States Supreme Court. Recently, he has been lead counsel in several post-grant review trials before the United States Patent Trial and Appeal Board, where he has successfully prosecuted inter partes review petitions to Final Written Decisions. Prior Work Experience Mr. Schmitt worked as a clerk in the United States District Court for the North District of Illinois from 1983-84. Before attending law school, Mr. Schmitt participated in research projects at Argonne National Laboratory and Amoco Chemicals Corporation. Professional Activities Member, Federal Circuit Bar Association, MARSHALL J. SCHMITT NAMED SUPER LAWYER EDUCATION Marshall J. Schmitt MICHAEL BEST ATTORNEYS NAMED THE BEST LAWYERS IN AMERICA 2016 Michael Best & Friedrich LLP is proud to announce that 82 attorneys have been selected for inclusion in The Best Lawyers in America 2016 in over 50 different areas of legal practice nationwide. Read More Harvard Law School, Juris Doctor (J.D.), cum laude, 1983, Member, Harvard Legal Aid Bureau University of Chicago, Bachelor of Science (B.S.), cum laude, 1980, Chemistry, Phi Beta Kappa BAR ADMISSIONS Illinois, 1983 U.S. Patent and Trademark Office, 2002 COURT ADMISSIONS
Member, American Intellectual Property Law Association Member, Intellectual Property Law Association of Chicago, Member, American Bar Association, Litigation, Intellectual Property and Antitrust Law Sections Member, Illinois State Bar Association, Former Chair, Antitrust and Unfair Competition Section Council Member, Chicago Bar Association Honors and Recognitions Mr. Schmitt has been recognized on the "Illinois Super Lawyer" list by Super Lawyers Magazine every year since 2012 in the area of Intellectual Property Litigation. Community Involvement Member, Downers Grove Rotary Club (1999-2010) Member, Downers Grove, IL Elementary School District 58 Board of Education (2001-2009), Vice President, Chair of Policy Committee (2005-2009) Member, Board of Control of SAED, DuPage County special education cooperative (2001-2009), Chair of Board (2007-2009) Member, Rotary Club of Chicago (2010-present), Member, Board of Directors and Service Chair (2012-present) U.S. Court of Appeals, Federal Circuit, 2008 U.S. Court of Appeals, Seventh Circuit, 1986 U.S. Court of Federal Claims, 1995 U.S. District Court, District of Colorado, 2014 U.S. District Court, Northern District of Illinois (including Trial Bar), 1984 U.S. District Court, Northern District of Indiana, 2009 U.S. District Court, Eastern District of Michigan, 2004 U.S. District Court, Western District of Michigan, 2006 U.S. District Court, Western District of Wisconsin, 2009 Outside Interests Running Astronomy Experience Mr. Schmitt has experience with a broad range of technologies, including extensive experience with plastics, consumer products, and pharmaceutical products. This experience extends from Hatch Waxman litigation to infringement matters involving consumer products and advanced materials. Mr. Schmitt is co-inventor on United States Patent No. 4,537,985, Process for the Manufacture of 1,4-Bis [2-(4 - Carbomethoxystyrenyl Benzene)]. Speeches AIA Trials Arrive at the Federal Circuit: Hot Topics on Appeal 2015 Intellectual Property Webinar Series, Webinar Lessons Learned from the First Two Years of Inter Partes Review - Our Experience with AIA Trials Michael Best Litigation Seminar Do You Own Your IP? Ethanol Webinar Series, Webinar Patent 101: A Primer For The Uninitiated 2013 Life Sciences Webinar Series, Webinar Issues With Strategic Partnering 2012 Patent Audio Conference Series Trial by Arbitration: The Arbitration Process from Three Perspectives Intellectual Property Law Association Navigating the Rapidly Evolving Intersection Between Patent and Antitrust Law A Primer 2011 Patent Audio Conference Series Non-Competition Agreements and Trade Secret Protection: Risk Management and Best Practices for Incoming and Departing Employees February 18, 2015 December 4, 2014 December 3, 2013 November 13, 2013 June 20, 2012 November 29, 2011 March 16, 2011 September 14, 2010
Fall 2010 Chicago Labor and Employment Relations Breakfast Briefing Series Seminar, Obtaining and Litigating Patents - New Challenges Intellectual Property Teleweb Seminar, Teleweb Seminar Patent Litigation In A Rocket Docket After Markman II Ocean Tomo Live IP Auction & Conference September 3, 2009 October 30, 2008 Publications PTAB Clarifies Motion to Amend Practice in Inter Partes Reviews A for Inter Partes Proceedings at the PTAB September 2015 Secondary Considerations Before the Board A for Inter Partes Proceedings at the PTAB July 2015 Additional Discovery In Inter Partes Reviews Absolutely No Fishing Allowed A for Inter Partes Proceedings at the PTAB May 2015 At the Board A for AIA Trial Proceedings at the PTAB April 2015 At the Board A for Post Grant Proceedings at the PTAB March 2015 At the Board A for Post Grant Proceedings at the PTAB January 2015 Antares Pharma Bolsters the Original Patent Rule for Reissued Patents At The Board A for AIA Trial Proceedings at the PTAB September 2014 Co-Owner s Refusal to Join Suit Defeats Standing to Sue for Patent Infringement Limelight Networks: There Has To Be A Bad Guy Supreme Court Paves the Way for Invalidating Vague Patents Has the Time Come for the U.S. to Create a Federal Patent Trial Court Chicago Daily Law Bulletin September 9, 2015 July 28, 2015 May 18, 2015 April 14, 2015 March 12, 2015 January 28, 2015 November 20, 2014 September 24, 2014 June 10, 2014 June 6, 2014 June 5, 2014 June 24, 2013
Supreme Court Rebuffs Saint-Gobain Fridge Patent Suit IP Law360 - Schmitt mentioned as counsel. Fed. Circ. Thaws Injunction in Fridge Shelf Patent Spat IP Law360 - Schmitt mentioned as counsel. United States Supreme Court to Hear Bilski v. Doll Case Regarding Business Method Patents Private Enforcement, Antitrust and Unfair Competition (Under Illinois Law and Practice) Illinois Institute of Continuing Legal Education Long-Distance Fluorescence Quenching by Electron Transfer in Rigid Solutions Journal of American Chemical Society, 1982, 104, 6488 March 08, 2010 July 21, 2009 June 2, 2009 1996 1982 News 82 Michael Best Attorneys Named The Best Lawyers In America 2016 Ten Michael Best Attorneys Named 2015 Illinois Super Lawyers Ten Michael Best Attorneys in 2013 Edition of Illinois Super Lawyers Michael Best Welcomes IP Litigation Partner to Chicago August 18, 2015 January 12, 2015 January 1, 2013 February 18, 2008 Events Issues With Strategic Partnering 2012 Patent Audio Conference Series Navigating the Rapidly Evolving Intersection Between Patent and Antitrust Law A Primer 2011 Patent Audio Conference Series Non-Competition Agreements and Trade Secret Protection: Risk Management and Best Practices for Incoming and Departing Employees Fall 2010 Chicago Labor and Employment Relations Breakfast Briefing Series Seminar, Obtaining and Litigating Patents - New Challenges Intellectual Property Teleweb Seminar, Teleweb Seminar June 20, 2012 March 16, 2011 September 14, 2010 September 3, 2009