Marshall, Gerstein & Borun LLP

Representative Experience

Mr. Rupert’s trial and litigation work has included such products, among many others, as:

• Plastics and chemicals
• Pharmaceuticals
• Medical products
• Heavy equipment (cranes, mining equipment, truck components)
• Computer networking equipment and computer software
• Web-based communication systems
• Telephony
• Consumer and sports products

Background and Credentials

Mr. Rupert has worked extensively on complex technology matters in all phases of litigation, including patent, copyright, trademark and related matters in federal and state courts throughout the country and overseas.  He has tried cases in federal and state courts throughout the country and has argued cases before the U.S. Courts of Appeals for the Federal Circuit and the Seventh Circuit.  Additionally, he is a member of the Commercial Panel of the American Arbitration Association, arbitrating IP disputes.

In his licensing and transaction work, he has provided strategic advice to many companies, negotiated domestic and international licenses and litigation settlements and handled corporate due diligence reviews and transactions. His experiences also include patent prosecution in a wide range of technologies.

Mr. Rupert is 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.

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 and remains actively involved. Prior to entering law school, Mr. Rupert served in the U.S. Air Force as a research scientist and intelligence officer.  Mr. Rupert earned his B.S. in Chemistry from Miami University (1968).  Mr. Rupert was selected for inclusion in the 2009 - 2013 Illinois Super Lawyers^® lists.  Only five percent of the lawyers in the state have been recognized each year.  He has been selected by the Chicago Law Bulletin’s Leading Lawyer Network as a "Leading Lawyer" and was selected by his peers for inclusion in The Best Lawyers in America 2013. In addition to his other honors, he is 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. 

In his career, Mr. Rupert has authored or co-authored numerous articles concerning intellectual property and other topics.  His publications have been cited by federal district and appellate courts.  His publications include:

• "Federal Circuit denies vulgar trademark to rooster-shaped lollipops," InsideCounsel, February 5, 2013.
• "4 ways to avoid the Rule 26 trap," InsideCounsel, January 8, 2013.
• "Secondary considerations save patents, earn $15 million," InsideCounsel, December 11, 2012.
• "Log it or lose it," InsideCounsel, November 6, 2012.
• "Consequences from the Federal Circuit’s Medtronic decision," InsideCounsel, October 23, 2012.
• "Follow the rules and do the surveys during a patent damages analysis," InsideCounsel, September 11, 2012.
• "Going for Broke on Damages Claims," InsideCounsel, July 31, 2012.
• "Dummkopf! You’re Fired – Daubert Derails Damages Experts for Both Sides in Apple-Motorola IP Battle," InsideCounsel, July 3, 2012.
• "Factors to Consider when Faced with Multi-District Patent Litigation," InsideCounsel, June 5, 2012.
• Patent Claim Construction in the Federal Circuit, 2012 Edition. Contributing Author, Thomson West, 2012.
• Patent Claim Construction in the Federal Circuit, 2011 Edition, Contributing Author, Thomson West, 2011.
• "Litigation Settlements and License Agreements: The Effect of Covenants Not To Sue
  In Light Of Recent Federal Circuit Decisions," Intellectual Property Litigation, Vol. 22, No. 1, American Bar Association, Fall 2010.
• "Therasense v. Becton Dickinson – An Opportunity for the Federal Circuit to Mend its Fractured Inequitable Conduct Rulings," Intellectual Property & Technology Law Journal, Vol. 22, No. 10, October 2010.
• "Clarifying, Confusing, or Changing the Legal Landscape; A Sampling of Recent Cases from the Federal Circuit," The Federal Circuit Bar Journal, Vol. 19, No. 4, 521 (2010).
• Patent Claim Construction in the Federal Circuit, 2010 Edition, Contributing Author, Thomson West, 2010.
• Claim Construction in the Federal Circuit, 2009 Edition, Contributing Author, Thomson West, 2009.
• "Trolling for Dollars: A New Threat to Patent Owners," Intellectual Property & Technology Law Journal, Vol. 21, No. 3, March 2009.
• "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.

Mr. Rupert  speaks frequently on intellectual property, professional ethics, and trial techniques, including:

• "IP Update: Patent Law Reform," Panel chair and presenter, InsideCounsel's SuperConference 2012, Chicago, Illinois, April 23, 2012.

• "Patent Litigation," Panel chair and presenter, Corporate Intellectual Property Law Conference, Law Bulletin Seminars, Chicago, Illinois, February 8, 2012.

• "Trial by Arbitration:  The Arbitration Process from Three Perspectives" Panel chair and presenter, Intellectual Property Law Association of Chicago, John Marshall Law School, Chicago, Illinois, November 2011.

• "Using ADR to Resolve IP and Licensing Disputes," Panel chair and presenter, Intellectual Property Law Association of Chicago, Chicago-Kent College of Law, October 2011.

• "Patent Mismarking - 2010 and Beyond" Served as panel moderator and speaker. Discussed current patent trends at the Law Bulletin Corporate IP Conference on February 8, 2011.

• "False Patent Marking," Panel chair and presenter, Corporate Intellectual Property Law Conference, Law Bulletin Seminars, Chicago, Illinois, May 2010.
• "Rule 50 Requirements on Appeal and Traps of Rule 50, F.R.Civ.P. The Need, and How to, Preserve JMOL and New Trial Positions for Consideration on Appeal," Intellectual Property Law Association of Chicago, DePaul University School of Law, May, 2010
• "Intellectual Property Risk Management, Practising Law Institute," September 2009.
• "IP Risk Management: Professional Responsibility, Conflicts, and Malpractice," Chicago Bar Association, February 2009.
• "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.

Community and professional Involvement

• Alumni Fellow, Washburn University,
• National Institute for Trial Advocacy, Deposition Instructor
• Advisor, Trial Advocacy Center, Washburn University School of Law
• Board of Advisors, DePaul University School of Law, Center for Intellectual Property Law & Information Technology
• American Bar Association: Antitrust Section; Patent, Trademark and Copyright Section; and Litigation Section
• American Intellectual Property Law Association
• Intellectual Property Law Association of Chicago, Vice Chair of Litigation Committee, May 2010 - May 2011; Amicus Committee, 2011-2012.
• Intellectual Property Owners Association, Arbitration Committee
• Richard Linn American Inn of Court
• Advisory Board, Evanston, Illinois, American Legion Post 42 Baseball Team (2008-2010)
• General Manager, Homestead Ranchers Summer Collegiate Baseball Team, Great Plains Collegiate Baseball League (2010), Chicago Suburban Baseball League (2011, 2012)

Military and Government Service

• U.S. Air Force, 1968-1974; served to Captain. 
• Private consultant, U.S. Air Force, Foreign Technology Division, 1974-1981 

Representative Matters

Recent representative matters handled by Mr. Rupert include:

• Defense of a breach of license case for a foreign company.
• Defense of a trademark infringement case for a manufacturer of off-road vehicle products.
• Defense of a patent infringement case for a large manufacturer of arcade games.
• Prosecution of a patent infringement action for a heavy equipment manufacturer involving mining equipment.
• Defense of a patent infringement case for a major heavy equipment manufacturer involving mobile cranes.
• Defense of a products liability action for an international sports products manufacturer involving alleged defective sports equipment.
• Prosecution of an arbitration involving a patent license for an equipment manufacturer.
• Defense of a breach of contract and fraud action for a consumer products manufacturer involving the termination of an asset purchase agreement.
• Defense of a breach of license action for an international sports products manufacturer that also involved a companion trademark infringement case brought by the manufacturer and a further companion bankruptcy action filed by the manufacturer’s licensee.

Short Biography