Donald W. Rupert provides intellectual property counseling and litigation with an emphasis on complex technology matters, including all phases of intellectual property litigation, and the negotiation and preparation of technology transfer agreements. Mr. Rupert has handled nearly 100 intellectual property lawsuits in his career and has been lead counsel in jury and bench trials involving patent, copyright, trademark and related matters in federal and state courts throughout the country and overseas and has argued cases before the U.S. Courts of Appeals for the Federal Circuit and the Seventh Circuit.
His practice also includes negotiating domestic and international licensing and litigation settlements and corporate due diligence reviews and transactions in the intellectual property area. Mr. Rupert has been the lead intellectual property attorney in licensing and corporate transactions having a cumulative value of more than $15 billion. His experiences also include patent prosecution in the mechanical, electrical, computer, chemical, and pharmaceutical industries. He is a member of the American Arbitration Association Commercial Panel of Arbitrators, arbitrating intellectual property disputes.
An Alumni Fellow of Washburn University, he is an advisor for the Trial Advocacy Center, Washburn University School of Law and a member of the board of advisors for DePaul University School of Law, Center for Intellectual Property. Mr. Rupert is also a deposition instructor for the National Institute for Trial Advocacy and was a member of the committee that prepared patent jury instructions to be used in the federal district courts of the Seventh Circuit.
Prior to entering law school, Mr. Rupert was a research scientist for the U.S. Air Force. He received his J.D., cum laude, from Washburn University School of Law (1976), where he served on the board of editors for the Washburn Law Journal. Mr. Rupert earned his B.S. in Chemistry from Miami University (1968). He is registered to practice before the U.S. Patent and Trademark Office.
Mr. Rupert has been named as one of the Best Lawyers in America, and as a Leading Lawyer in the U.S. He is also listed in Who's Who in American Law, Who's Who in American Business, Who's Who in America, Who's Who in the World, and The Legal 500.
A frequent speaker on intellectual property, professional ethics, and trial techniques, Mr. Rupert has also published numerous articles concerning intellectual property and other topics. Some recent articles include:
Select Publications
"Intellectual Property Litigation Strategies," chapter in Inside the Minds: Commercial Litigation Strategies, Aspatore Books, 2008.
"Arbitration Clauses in Patent Disputes," IP Law 360, 2007.
"Storm Over the Blackberry - The Boundaries of Liability," Co-author, Patent World, Issue 171, April 2005.
"Vitiating the Doctrine of Equivalents: A New Patent Law Doctrine," The Federal Circuit Bar Journal, Vol. 12, No. 3, 457, 2003.
"Patent Indemnification Under the UCC," International Legal Strategy, Vol. X-12, Japan, 2001.
"Patenting Computer Software and Methods of Doing Business: The United States vs. The World," Co-author, International Trade and Business Law Annual, Vol. V, April 2000.
"E-commerce and the Internet: Personal Jurisdiction in the U.S., Managing Intellectual Property Trademark Yearbook, 1999.
"The Discoverability of Documents Prepared for Alternative Dispute Resolution Proceedings," Alternative Dispute Resolution Report, Vol. 3, No. 21, Bureau of National Affairs, Inc., 1989.
"Hybrid License Agreements in the Circuit Courts of Appeals: The Demise of Contract Principles," Selected Legal Papers, Vol. V, No. 2, American Intellectual Property Law Association, 1987.
"An Introduction to United States Antitrust Law," 83 The Law Society Gazette 112, 1986.
"The Relationship of Patent Law to Antitrust Law," 49 Antitrust Law Journal 755, 1981.
Speaking Engagements
"Using ADR to Resolve IP and Licensing Disputes," 2008 Licensing Executives Society Annual International Conference, Chicago, Illinois, May 2008.
"Jury (De)Selection in Federal Courts," Litigation Skills II, Law Bulletin Seminars, Chicago, Illinois, May 2008.
“Intellectual Property Arbitration – Demystifying the Process: What You Should Know,” Broadcast Webinar, December 2007.
“The Federal Circuit Court’s Recent Decision: In re Seagate Technology,” Law Seminars International, August 2007.
"Developing an Integrated Intellectual Property Strategy," speech presented to the Richard T. Farmer School of Business Administration, Miami University, Oxford, Ohio, February 2007.
"Ethical Issues In the Practice of Law," speech presented to the Washburn University School of Law, October 2006.
"Intellectual Property Issues in the Business Environment," speech presented to the Richard T. Farmer School of Business Administration, Miami University, Oxford, Ohio, February 2004.
"Expert Witnesses in the Courtroom," speech presented to the Washburn University School of Law, October 2003.
"Overview of Intellectual Property," speech presented to the Richard T. Farmer School of Business Administration, Miami University, Oxford, Ohio, February 2003.
"New Developments in Copyright Law," speech presented to the DePaul University School of Law, Chicago, Illinois, November 2002.
"Intellectual Property Issues in Distance Learning Settings," speech presented to the North Suburban Higher Education Consortium, Chicago, Illinois, February 2001.
"Intellectual Property Issues in International Trade," speech presented to the Industrial Club of Mexico, Mexico City, June 1999.
"Intellectual Property Issues in the E-commerce Environment," E-commerce Seminar, sponsored by Mayer, Brown & Platt, New York City, New York, January 1999.
"Intellectual Property in the International Marketplace," Pressure Sensitive Tape Council, Chicago, May 1996.
"Introduction to the Effective Use of Statistical Analyses in Intellectual Property Litigation," Intellectual Property Litigation Update, sponsored by Coopers & Lybrand L.L.P., Chicago, March 1996.
"Patent Damages --- Should the Georgia Pacific Approach be Scrapped?" Licensing Executives Society, Waikoloa, Hawaii, October 1994.
"Ethical Considerations in the Practice of Intellectual Property Law," Iowa Intellectual Property Law Association, Dubuque, Iowa, October 1992.
"The Use of Expert Witnesses in Complex Technology Litigation," Iowa Intellectual Property Law Association, Dubuque, Iowa, October 1992.
"Complex Technology Related Litigation," Kansas Bar Association Continuing Legal Education Seminar, Topeka, Kansas, March 1991.
"Effects of United States Antitrust Law on Patent Law," Japanese Intellectual Property Owners Association, Tokyo and Osaka, May 1991.
"The Discoverability of Documents Prepared for Alternative Dispute Resolution Proceedings," American Bar Association Annual Meeting, Section of Patent, Trademark, and Copyright Law, Honolulu, August 1989.
"Hybrid License Agreements in the Circuit Courts of Appeal: The Demise of Contract Principles," American Intellectual Property Law Association, Pittsburgh, Pa., May 1987.
MEMBERSHIPS
- American Bar Association, Antitrust Section, Patent, Trademark and Copyright Section, and Litigation Section
- American Intellectual Property Law Association
- Intellectual Property Law Association of Chicago, Litigation Committee
- Intellectual Property Owners Association, Licensing Committee
- Richard Linn American Inn of Court
