Marshall, Gerstein & Borun LLP

Representative Experience

Mr. Kriegel has also guided company innovations in such areas as:

• Intravenous drug delivery systems
• Dental instruments
• Gravity-feed shelving
• Furniture components
• In-line bottling technology
• Ink jet printing technology
• Meat processing equipment
• Fluid control systems
• On-site waste systems
• Retail displays
• Railcar decking and door hangers
• Consumer products
• Hardware

• Manufacturing equipment technology

Background and Credentials

Jeremy R. Kriegel prepares and prosecutes U.S. and foreign patents in a wide range of mechanical technologies.  He also helps lead companies' products to market by counseling on patent and trademark infringement, licensing, patent validity, right-to-make issues, and product marking. In addition, he is experienced in patent and trademark licensing, trademark litigation and prosecution matters, as well as Internet domain name disputes.

He has also represented clients in patent litigation matters, including participation in all phases of discovery, Markman hearings, and settlement negotiations.

• His approach to securing patents begins with solid analysis and attention to detail. Then he leads clients through the process, simplifying complex issues for them.  He works closely with them all along the way, being easily accessible to clients and helping them avoid pitfalls and realize commercial advantages within the nuanced, ever-changing world of intellectual property law.

Mr. Kriegel served as a law clerk to the Hon. Edward M. Thomas of the Wayne County Circuit Court in Detroit.

He received his J.D. in 1995 from Washington University School of Law (St. Louis, MO).  He received his B.S., with distinction, in Mechanical Engineering and a Certificate in Management Studies, with a concentration in Public Sector Analysis, from the University of Rochester (Rochester, NY) in 1992, where he was inducted into the honors society Tau Beta Pi.  While in law school, Mr. Kriegel served on the law review editorial board as Notes and Comments editor for the Washington University Journal of Urban and Contemporary Law.

Publications and Speeches

• Keynote speaker at Association of Legal Administrators IP Retreat on The America Invents Act -- What Patent Administrators Need to Know. September 2012.
• "Strategies to leverage Chinese patent subsidies," Intellectual Property Magazine, July-August 2012.
• He lectured in London, UK and Munich, Germany in April 2012 on post-grant review under the America Invents Act.
• "Is the Patent Office trying to price the AIA out of existence? - Drastic fee increases would discourage use of intended improvements to U.S. patent system" InsideCounsel, March 6, 2012.
• "5 considerations when served with a post-grant review petition - Post-grant review under the America Invents Act—a new patent battlefront" InsideCounsel, February 7, 2012.
• "First to File - It's Not Just a Race to the Patent Office - As March 16, 2013 Approaches, The America Invents Act Will Alter Patent Filing Strategies" InsideCounsel, January 10, 2012.
• "We Passed the America Invents Act – What Next? - Five More Tips To Help Companies Prepare For Implementation Of The AIA’s Provisions" InsideCounsel, December 16, 2011.
• "We Passed the America Invents Act - Now What? - Five Tips To Help Companies Prepare For The Impending Implementation Of The AIA’s Provisions" InsideCounsel, November 15, 2011.
• Mr. Kriegel's 'All Aboard For Post-Grant Patent Review In Detroit,' featured in both the Intellectual Property and Midwest sections of the February 23rd, 2011 installment of Law360, a national newswire for business lawyers, explains nuances of post-grant review procedures outlined in the Patent Reform Bill and how patentees may make the most of procedural opportunities to gain advantages in cases pending before the Bill’s new Patent Trial and Appeal Board.
• In an article appearing in the January 2011 Corp! magazine titled ‘Five Benefits for Midwest Businesses from a Satellite US Patent Office,’ Jeremy R. Kriegel identifies several advantages of having this branch office in the Midwest.
• Featured in a September 2010 Chicago Lawyer Q&A article, Jeremy R. Kriegel shares a glimpse of his non-lawyer side.
• Jeremy R. Kriegel wrote the article entitled, “Patent Abstracts Are Not the Answer To Repatriating Jobs.”  The article appeared in Patently-O and the LexisNexis Patent Law Community Blog on August 25, 2010. It also appeared in The Wall Street Journal Guest Post and the Advanced Biofuels Newsletter on August 26, 2010.  Mr. Kriegel commented on H.R. 5980, a Bill aimed at repatriating jobs, arguing the “Patent Protection” aspects of the Bill will not likely fulfill the Bill’s goals.  The article discusses the ready access competitors often have to corresponding foreign applications, the protections already available to U.S. applicants concerned about pre-issuance publication of their inventions, and the favored treatment the Bill’s proposed amendments to U.S. patent laws would effectively provide to foreign applicants who base U.S. applications on earlier-filed PCT applications.
• Jeremy R. Kriegel is quoted in the July 9, 2010 Law360 article titled “5 Tips For Managing A Complex Patent Portfolio.”  Mr. Kriegel offers valuable advice to business owners and in-house counsel on how to conserve time and money in the management of complex patent portfolios.
• Mr. Kriegel’s article, “A Close Shave – In A 2-1 Decision, Gillette Gets A Second Chance At A Preliminary Injunction Against The Quattro^® Razor,” was featured as a guest column in “IP Law 360” – the “Newswire for IP Professionals.”
• He lectured at the America-Israel Chamber of Commerce, Young Entrepreneurs Forum on the topic of “What You Need to Know About IP To Help Your Business Grow and Thrive.”

• He delivered a presentation to the Chicago Bar Association’s Intellectual Property Law Committee, titled “Anatomy of a Patent Prosecution File History – Litigation Lessons from a Patent Prosecutor’s Desk.”

Community and Professional Involvement

• He has twice co-chaired the Chicago Bar Association's national moot court competition.
• A volunteer for the Chicago Intellectual Property Alliance (CIPA), Mr. Kriegel mentors law students interested in careers in intellectual property law and also judges high school science students on behalf of CIPA at the Chicago Science Fair.
• A volunteer practicing attorney “coach” for the Chicago Committee LegalTrek program in which he mentors college students from historically underrepresented groups, helping them to develop and hone contract negotiation techniques while encouraging them to attend law school and pursue careers in the legal profession.

Representative Matters

Clients have benefited from Mr. Kriegel’s representation in the following cases:

Advanced Interactive v. Matsushita, Thomson Consumer Electronics,* et al. (local counsel)
U.S. District Court, Northern District of Illinois
Case Type(s): Patent Infringement
Area(s) of practice: Electrical Arts/Computer Software

American Drillbox* v. Beckett
U.S. District Court, Eastern District of Michigan
Case Type(s): Patent Infringement
Area(s) of practice: Mechanical Arts

ASC Machine Tools, Inc. v. The Bradbury Company*
U.S. District Court, Eastern District of Washington
Case Type(s): Trade Secrets
Area(s) of practice: Trade Secrets, Mechanical Arts

Belden Wire & Cable v. Cable Design Technologies, Inc.* (local counsel)
U.S. District Court, Northern District of Illinois
Case Type(s): Patent Infringement
Area(s) of practice: Mechanical Arts

Black & Decker, Inc. v. The Coleman Company*
U.S. District Court, Eastern District of Virginia
Case Type(s): Trade Secrets
Area(s) of practice: Trade Secrets, Mechanical Arts

Cutting Edge Technology LLC v. Paradise Dental Technologies and Hu-Friedy Mfg. Co., Inc.*
U.S. District Court, Southern District of Texas
Case Type(s):  Patent Infringement
Area(s) of practice:  Mechanical Arts

Domestic Fabrics Corp. v. Sears, Roebuck and Co.*
U.S. District Court, Eastern District of North Carolina
Case Type(s): Patent Infringement
Area(s) of practice: Mechanical Arts

Hu-Friedy Mfg. Co., Inc.* v. J&J Instruments, Inc.  
U.S. District Court, Northern District of Illinois
Case Type(s): Patent Infringement
Area(s) of Practice:  Mechanical Arts

International Bay Clubs, Inc. v. Tone Products, Inc.*
Trademark Trial and Appeal Board
Case Type(s): Opposition
Area(s) of practice: Trademarks

Intervisual Communications, Inc. v. One Up, Inc., et al.*
U.S. District Court, Northern District of Illinois
Case Type(s): Licensing
Area(s) of practice: Intellectual Property Transactions, Mechanical Arts

Jefferson* v. City of Chicago, et al.
U.S. District Court, Northern District of Illinois
Case Type(s): General Civil Litigation

Lai v. Palmer (Newell Window Furnishings)*
Board of Patent Appeals and Interferences of US Pat. & TM Office
Case Type(s):  Patent Interference
Area(s) of practice:  Mechanical Arts

Manders, M.D.* v. McGhan, et al.
U.S. District Court, Western District of Pennsylvania
Case Type(s): Patent Infringement
Area(s) of practice: Mechanical Arts

Schnadig Corp.* v. International Furniture
U.S. District Court, Northern District of Illinois
Case Type(s): Trademark Infringement
Area(s) of practice: Trademarks

SmithKline Beecham, Inc. v. STS Overseas Trading LLC*
Trademark Trial and Appeal Board
Case Type(s): Opposition
Area(s) of practice: Trademarks

Tuf-Tite, Inc.* v. Polylok, Inc., et al.
U.S. District Court, Northern District of Illinois
Case Type(s): Patent Infringement
Area(s) of practice: Mechanical Arts

Ty, Inc. v. Salvino, et al. (local counsel)*
U.S. District Court, Northern District of Illinois
Case Type(s): Copyright Infringement
Area(s) of practice: Copyrights

*Party Represented

Short Biography