Brad Lyerla is a trial lawyer who focuses on patent and trade secret litigation.
Mr. Lyerla has been lead counsel in numerous trials and arbitrations, often on behalf of some of the most sophisticated companies in the U.S. He has successfully tried cases for Solo Cup Company, AM International, U.S. Robotics, MCI, The Quaker Oats Company, Business Records Corporation, Loewen International, Classics Entertainment, FutureSource and Monosol, among many others.
Mr. Lyerla also has led litigations that ended successfully through summary judgment or negotiated business arrangements for such clients as Hospira, General Electric, Charter Communications, Sara Lee, Ameritech, ChrisCraft Industries, Tenneco, Millennium Information Services, Whitman Corporation, Shopko, General Dynamics, Wolfram Research, Glidewell Laboratories, Pentech Pharmaceuticals, and many more.
In addition to his trial work in the intellectual property arena, Mr. Lyerla has tried more than a dozen criminal trials, including the successful defense of two death penalty cases.
In a career that has spanned more than 29 years and has included hundreds of trial days, he has had some unique experiences. A few of the highlights include:
Mr. Lyerla led the successful defense of the Solo Cup Company in Fort James Company v. Solo Cup Company. Fort James alleged that Solo Cup infringed 3 patents relating to the microstructure of pleats in the rims of paper plates. Fort James sought nearly $100 million, including treble damages and attorneys fees. Flouting recent Federal Circuit opinions rejecting the defense as legally unsound, Mr. Lyerla made the centerpiece of the defense that Solo was merely “practicing the prior art”. The Milwaukee, Wisconsin jury was out less than two hours before returning a verdict of non-infringement giving Mr. Lyerla’s client a total victory. The jury’s verdict was not appealed.
Mr. Lyerla took over the defense of MCI in the second day of an emergency injunction trial when his partner could not continue because of the unexpected early arrival of her baby. This trial included an unusual cross examination by Mr. Lyerla. Illinois Bell alleged that MCI’s advertising that its rates for local toll phone calls were “always lower” than Bell’s was misleading. With no deposition or notes, Mr. Lyerla cross-examined Bell's expert who had testified concerning a consumer survey. By the end of the free-wheeling cross-examination, the expert conceded, among other things, that he could not consistently distinguish between leading and non-leading questions in a consumer survey. When Bell’s lawyer did not re-direct the witness, Judge Joan Gottschall of the Federal Court in Chicago told Bell’s lawyer to call his “next victim.”
Mr. Lyerla was one of three lawyers (from three different law firms) who represented Ron Katz and MCI in the very unique Markman hearing in RAKTLP and MCI v. AT&T, et al. The hearing in Philadelphia lasted nine full trial days – which included expert testimony and attorney argument. Judge Lowell Reed’s opinion exceeded 100 pages and found for Mr. Lyerla’s clients on virtually every contested issue.
Mr. Lyerla took over the defense of a trade secrets case after prior counsel had lost a preliminary injunction trial. Mr. Lyerla counter-claimed and won a multi-million dollar judgment in a bench trial on the counterclaim. The high-point of the trial came when the plaintiff attempted to testify about imaginary conversations that he had envisioned with potential buyers of the business in question. Judge Harry Leinenweber, while laughing out-loud, over-ruled Mr. Lyerla’s objection that no foundation for such testimony could be laid ‘unless the witness had been on drugs or suffering from a head injury’ at the time of the imaginary conversations. The end result was another complete victory for Mr. Lyerla’s client.
Mr. Lyerla was asked by Quaker Oats to defend Bill Redmond, Quaker’s newly-hired VP of Operations, in an emergency injunction trial brought by Pepsi. This case has become the leading case for a trade secrets doctrine known as the inevitable disclosure doctrine. Pepsi, Redmond’s former employer, sought to block him from working for Quaker. After an eight day trial (that began only a week after the complaint was filed), the court denied Pepsi’s request to prohibit Redmond from working at Quaker, but did restrict Redmond’s areas of responsibility for approximately five months. The case is known not only for breaking new ground in trade secrets law, but also for the stories surrounding Mr. Lyerla’s cross-examination of Pepsi’s CEO, Craig Weatherup. For some of the inside story, see Lyerla, Thirteen Rules for Inevitable Disclosure Trials, The Computer Lawyer, Vol. 15, no. 6, June, 1998.
Mr. Lyerla represented Business Records Corporation in a jury trial in Danville, Illinois. BRC contended that its former regional president stole trade secrets and used those trade secrets to gain the business of 16 former BRC customers. However, BRC did not authorize the depositions of the customers before the trial. When 13 of the former customers appeared at the trial and testified against BRC – a nightmarish scenario that Mr. Lyerla had foreseen – he performed radical surgery on his theory in mid-trial and secured a 5 year injunction against the former president and recovered his client’s attorneys fees. The case now is a leading case in Illinois regarding the enforcement of non-compete agreements that are ancillary to the sale of a business. Business Records Corporation v. Lueth, 981 F.2d 957 (7th Cir. 1992).
Mr. Lyerla was part of a team of lawyers who represented General Dynamics in what is believed to have been the largest ADR mini-trial ever conducted up to that point. The night before the closing arguments, the lead lawyer for GD became too ill to argue the next morning. Mr. Lyerla prepared all night and argued for GD the following day on the critical liability issues. Mr. Lyerla’s argument was singled out for praise by his client’s Chairman of the Board. The ADR neutral (a retired federal district court judge who presided at the mini-trial) wrote an advisory opinion finding for GD on the key issues and recommending a substantial settlement in GD’s favor. The case later settled for a nine figure settlement.
Mr. Lyerla represented a seller of paper products in a jury trial in Wheaton, Illinois. When the opposing party argued that it’s interpretation of the sales contract at issue precluded liability based on a trade usage, Mr. Lyerla responded that a trade usage is like the argument one hears from a child, “all the other children get to . . . .” The jury of mostly parents found for Mr. Lyerla’s client.
Mr. Lyerla’s philosophy is that to achieve excellence as a counselor and advocate, a lawyer must litigate with joy and enthusiasm not only for his client, but also for the law. Good luck doesn’t hurt either.
Mr. Lyerla received an AV® Peer Review Rating from LexisNexis Martindale-Hubbell, and has been named an "Illinois Super Lawyer" by Law & Politics. He is listed in Who's Who in America, Who's Who in American Law, and Who's Who in the World, and has been named one of America's Leading Lawyers by the American Research Corporation. A past recipient of the John Powers Crowley Justice Award for his pro bono trial work, Mr. Lyerla is a life fellow of the American Bar Foundation.
Mr. Lyerla is a member of the Patent Litigation Committee of the American Intellectual Property Law Association, the Litigation, Business and Intellectual Property Sections of the American Bar Association, the Intellectual Property Section of the Illinois State Bar Association (Chair 1996-1997), the Professional Responsibility Committee of the Chicago Bar Association, and the Intellectual Property Law Association of Chicago (Board member, 2007-2009; Chair, Patent Litigation Committee, 2005-2007; Chair, Antitrust Committee, 2009-).
He was editor in chief of Intellectual Property Litigation from 1990 to 2005 and now serves as editor at large. Mr. Lyerla also is a contributing author to Claim Construction In The Federal Circuit, Manzo, ed., West Legal Works (2005 and 2006).
In 2009, Mr. Lyerla was a member of the committee that drafted the proposed local rules for patent litigation in the Northern District of Illinois.
Mr. Lyerla received his B.A. from the University of Illinois in 1976 and was elected to Phi Beta Kappa. He graduated from the University of Illinois College of Law in 1980 where he received honors and was a member and editor of the law review.
Selected Speeches and Conferences
April 17, 2009, "10 Tips for Effective Use of Expert Witnesses in Patent Cases," Practising Law Institute, National On-line Program.
September 11, 2008, "Litigation Skills - Trial & Post-Trial," Law Bulletin Publishing Company, Chicago, Illinois (panelist on civility in litigation).
June 27, 2008, "Eleven Lessons Learned in Trade Secrets Trials," GE Global IP Conference, Orlando, Florida.
May 18, 2007, "The Meaning of KSR," IPLAC and The John Marshall Law School, Chicago, Illinois (panelist and speaker).
September 27, 2006, "Recent Cases and Future Implications," Pharmaceutical & Biotech Patent Strategies (presented by IQPC), Philadelphia, Pennsylvania.
June 16, 2006, “ Illinois Tool Works and Tying Arrangements – The IP Perspective,” Law Seminars International Conference Corporate Law for Intellectual Property Lawyers, Atlanta, Georgia.
April 27, 2006, "Intellectual Property Law Association of Chicago Mini-Conference on Willfulness in Patent Litigation," IPLAC, Chicago, Illinois (Chair and Panelist).
February 17, 2006, "The Problem of Universals and the Implications for Claim Construction," Law Seminars International Conference on Patent Claim Construction, Chicago, Illinois.
November 29, 2005, "Plato, Nominalism and Patents," Practicing Law Institute Workshop on Patent Litigation, Chicago, Illinois.
September 30, 2005, "Claim Construction after Phillips v. AWH," Intellectual Property Law Association of Chicago, Chicago, Illinois (Panelist).
October, 2004, "Trying the Issue of Willful Infringement to a Jury," Association of Patent Law Firms Annual Meeting, Chicago, Illinois (National Audiocast).
January 22, 2004, "Claim Construction: The Role of Claim Language vs. The Invention," Intellectual Property Law Association of Florida, Miami, Florida.
November 12, 2003, "Trade Secret Litigation from the Defense Perspective," Law Seminars International Trade Secrets Workshop, Chicago, Illinois.
September 24, 2003, "Use of Prosecution History in a Markman Hearing," Association of Patent Law Firms Markman Roundtable, Chicago, Ilinois (National Audiocast).
June 1,8, and 22, 2001, “Litigating the Nuances of Willful Infringement,” AIPLA Advanced Patent Litigation Roadshow, Boston, MA; Chicago, IL; and Los Angeles, CA.
July 11-15, 2000, Trademark Trial Advocacy Workshop, INTA and DePaul College of Law, Chicago, Illinois (Lecturer on “Impeachment Techniques in Cross-Examination”; instructor on direct and cross-examinations and use of exhibits.
April 2000, Protecting Trade Secrets Online Seminar, sponsored by Law.com, New York City, New York (Faculty member and discussion leader).
REPRESENTATIVE MATTERS
Acacia v. Charter Communications*
The United States District Court for the Northern District of California
Case Type(s): Patent Infringement
Acacia v. Cable America, NGP Cable, Inc.*, et al
The United States District Court for the District of Arizona
Case Type(s): Patent Infringement
Acacia v. Mid-Continent Media, Inc., et al*
The United States District Court for the District of Minnesota
Case Type(s): Patent Infringement
Acacia v. Armstrong Group, et al*
The United States District Court for the District of North Dakota
Case Type(s): Patent Infringement
ARS* v. Cell Genesys, Inc. and Transkaryotic Therapies, Inc.
The United States District Court for the District of Massachusetts
Case Type(s): Patent Infringement
AM International* v. IBM
The United States District Court for the Northern District of Illinois
Case Type(s): Trade Secret Misappropriation, Non-compete
Ben Venue v. Hospira*
The United States District Court for the Eastern District of Ohio
Case Type(s): Patent Infringement
Big Daishowa Seiki Co. v. Techniks*
The United States District Court for the Northern District of Illinois
Case Type(s): Patent Infringement
Broadcast Innovation v. Charter Communications*
The United States District Court for the District of Colorado
Case Type(s): Patent Infringement
Business Records Corporation* v. Lueth
The United States District Court for the Central District of Illinois
Case Type(s): Trade Secret Misappropriation
C&F Packing v. IBP, Inc.*
The United States District Court for the Northern District of Illinois
Case Type(s): Patent Infringement
Cacique* v. Cannarozzi
The United States District Court for the Northern District of Illinois
Case Type(s): Trade Secret Misappropriation
Cacique* v. V&V Supremo
The United States District Court for the Northern District of Illinois
Case Type(s): Trade Secret Misappropriation
Celanese v. Monosol*
The United States District Court for the Southern District of Texas
Case Type(s): Patent Infringement
CFM Harris v. Twinstar* and Menards*
The United States District Court for the Northern District of Illinois
Case Type(s): Patent Infringement
Charter Communications* v. Verizon
The United States District Court for the Eastern District of Virginia
Case Type(s): Patent Infringement
ChrisCraft Industrial Products, Inc.* v. Kuraray, Ltd.
The United States District Court for the Northern District of Illinois
Case Type(s): Trade Secret Misappropriation
Connector Service Corporation v. Briggs*
The United States District for the Northern District of Illinois
Case Type(s): Trade Secret Misappropriation
Continental G.I. v WLS Television*, CapitalCities/ABC, Inc.*
The United States District Court for the Northern District of Illinois
Case Type(s): Trademark Infringement
Continental PET v. American National Can*
The United States District Court for the District of Connecticut
Case Type(s): Patent Infringement
Covad v. Hightman* and Ameritech*
Circuit Court of Cook County, Illinois
Case Type(s): Trade Secret Misappropriation
CRC Press, LLC v. Wolfram Research, Inc.*
The United States District Court for the Central District of Illinois
Case Type(s): Copyright Infringement
Creeden Associates v. Infosoft*
The United States District Court for the Northern District of Illinois
Case Type(s): Copyright Infringement, Trade Secret Misappropriation, Lanham Act
Dixonweb* v. Webcast
The United States District Court for the Northern District of Illinois
Case Type(s): Patent Infringement
Document Generation v. GE Healthcare*
The United States District Court for the Southern District of Illinois
Case Type(s): Patent Infringement
Eli's Chicago Finest, Inc. v. The Cheesecake Factory*
The United States District Court for the Northern District of Illinois
Case Type(s): Trademark Infringement, Lanham Act
ECI v. Accuflow*
Circuit Court for DuPage County, Illinois
Case Type(s): Trade Secret Misappropriation
FACTS Services* v. Western General
The United States District Court for the Northern District of Illinois
Case Type(s): Copyright Infringement
Fred Meyer Stores v. Shopko*
Arbitration
Case Type(s): Trade Secret Misappropriation
Fort James Corporation v. Solo Cup Company*
The United States District Court for the Eastern District of Wisconsin
Case Type(s): Patent Infringement
GE-Interlogix* v. Honeywell
The United States District Court for the District of Minnesota
Case Type(s): Patent Infringement, Contracts
General Dynamics, Inc.* v. AT&T Telephone Company
The United States District Court for the Northern District of Illinois
Case Type(s): Antitrust
GE Licensing* v. Denso, et al
The United States District Court for the Eastern District of Texas
Case Type(s): Patent Infringement
GSK v. General Electric*
The United States District Court for the Eastern District of Texas
Case Type(s): Patent Infringement
Harris Corporation V. Addamax*
Arbitration
Case Type(s): Copyright
Harris Investment Management* v. National City Investment Management
Circuit Court for Cook County, Illinois
Case Type(s): Trade Secret Misappropriation
Headwaters v. AKJ*
The United States District Court for the Eastern District of Kentucky
Case Type(s): Patent Infringement
HID v. GE Security*
Arbitration
Case Type(s): Trade Secrets, License Dispute
Honeywell v. Brunswick/Navman*
The United States District Court for the District of Delaware
Case Type(s): Patent Infringement
Hybrid Patents v. Charter Communications*
The United States District Court for the Eastern District of Texas
Case Type(s): Patent Infringement
IGT v. Bally Manufacturing*
The United States District Court for the District of Nevada
Case Type(s): Patent Infringement
Illinois Bell Company v. MCI Telecommunications Corporation*
The United States District Court for the Northern District of Illinois
Case Type(s): Lanham Act
Mathematica Policy Research v. Wolfram Research, Inc.*
The United States District Court for the Southern District of New York
Case Type(s): Trademark Infringement, Lanham Act
Lemelson v. Whitman Corporation*
The United States District Court of Arizona
Case Type(s): Patent Infringement
Looking Glass v. Classics Entertainment*
Arbitration
Case Type(s): Copyright Dispute
McGraw Hill v. Construction Market Data*
The United States District Court for the Northern District of Illinois
Case Type(s): Copyright Infringement
Millennium Information Services* v. Mueller
The United States District Court for the Northern District of Illinois
Case Type(s): Trade Secret Misappropriation
Monosol* v. Aquafilm
The United States District Court for the Northern District of Illinois
Case Type(s): Trade Secret Misappropriation, Non-compete
American Stock Exchange v. Mopex*
The United States District Court for the Southern District of New York
Case Type(s): Patent Infringement
Motorola v. U.S. Robotics*
Circuit Court of Cook County, Illinois
Case Type(s): Trade Secret Misappropriation
North American Container, Inc v. Quaker Oats*
The United States District Court for the Northern District of Texas
Case Type(s): Patent Infringement
Odom v. GE Franuc*
The United States District Court for the District of Oregon
Case Type(s): Patent Infringement
Oleksy v. GE Energy*
The United States District Court for the Northern District of Illinois
Case Type(s): Patent Infringement
Pepsico, Inc. v. Redmond* and Quaker Oats
The United States District Court for the Northern District of Illinois
Case Type(s): Trade Secret Misappropriation
Piser v. Weinstein*
Circuit Court of Cook County, Illinois
Case Type(s): Trade Secret Misappropriation, Non-Complete
PSN v. Ivoclar, Glidewell*, et al.
The United States District Court for the Northern District of Illinois
Case Type(s): Patent Infringement
PureChoice* v. Honeywell
The United States District Court for the Eastern District of Texas
Case Type(s): Patent Infringement
RAKTL, L.P.* and MCI Telecommunications Corporation* v. AT&T Corporation
The United States District Court for the Eastern District of Pennsylvania
Case Type(s): Patent Infringement
Rembrandt v. Charter Communications*
The United States District Court for the Eastern District of Texas
Case Type(s): Patent Infringement
Rosario D. Salerno's Sons, Inc. v. Rosemary Salerno*
Circuit Court of Cook County, Illinois
Case Type(s): Trademark Infringement
Rycoline v. Fuji Hunt Photographic Chemicals*
Circuit Court of DuPage County, Illinois
Case Type(s): Trade Secret Misappropriation
Scott USA* v. Profile for Speed
The United States District Court for the Northern District of Illinois
Case Type(s): Patent Infringement
Scott USA* v. T-Gear
The United States District Court for the Southern District of Florida
Case Type(s): Patent Infringement
Square D v. ElectroIndustries*
The United States District Court for the Northern District of Illinois
Case Type(s): Patent Infringement
Sportmart v. Nordica*
The United States District Court for the Northern District of Illinois
Case Type(s): Antitrust
Stulberg* v. Sulzer Medica
Arbitration
Case Type(s): Patent Infringement
Theotokatos v. Sara Lee Personal Products*
The United States District Court for the Northern District of Illinois
Case Type(s): Copyright Infringement
Trading Technologies v. Man Financial*
The United States District Court for the Northern District of Illinois
Case Type(s): Patent Infringement
Union Pacific Resources* v. Natural Gas Pipeline Company of America
The United States District Court for the District of Nebraska
Case Type(s): Antitrust
US Data v. GE Fanuc*
The United States District Court for the Eastern District of Texas
Case Type(s): Patent Infringement
Varrin v. Queen’s University, Pentech Pharmaceutical*, Abbott Laboratories, TAP Pharmaceutical
The United States District Court for the Northern District of Illinois
Case Type(s): Patent Infringement
Wolfram Research* v. Cook
The United States District Court for the Central District of Illinois
Case Type(s): Trade Secret Misappropriation
*Party Represented
