With 43 years of experience, Donald W. Rupert has handled well over 100 IP litigation matters in the chemical, consumer products, heavy equipment, pharmaceutical, and computer industries. He has been lead trial counsel in jury and bench trials and lead appellate counsel in IP appeals; he also has acted as lead IP attorney in commercial transactions having a cumulative value of over $15 billion. Mr. Rupert has handled the prosecution and defense of patent and trademark infringement cases for major manufacturers of heavy machinery, consumer goods, and sporting equipment, has developed a successful licensing strategy for a U.S. company relating to the world-wide distribution and use of dietary supplements.
In addition, Mr. Rupert is a member of the Commercial Panel of the American Arbitration Association and has acted as the arbitrator in intellectual property cases having a range of technical issues.
He has also authored or co-authored a number of amicus curiae briefs filed in the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit on important intellectual property issues.
Mr. Rupert’s skills and qualifications have been acknowledged annually by the Martindale-Hubbell® AV Peer Review Rating™ since 1987, and The Legal 500, which noted that clients describe him as a “person of ethics and integrity, with strong expertise.” He was selected for inclusion Illinois Super Lawyers® annually from 2009–present wherein only five percent of the lawyers in the State are recognized each year. He also has been selected by the Chicago Law Bulletin as a “Leading Lawyer” each year since 2004, and has been selected by his peers for inclusion in The Best Lawyers in America© annually since 2007 in the practice areas of Biotechnology Law, Litigation–Patent, Litigation–Intellectual Property, and Patent Law. Mr. Rupert was named the “IP Lawyer of the Year (Midwest)” for 2014 by ACQ Global Awards, and “Lawyer of the Year in Biotechnology Law (Chicago)” in 2014 and 2018 by Best Lawyers. In addition to his honors, he is listed in Who's Who in American Law, Who's Who in American Business, Who's Who in America and Who's Who in the World.
Mr. Rupert’s trial and litigation work has included such products, among many others, as:
- Plastics and chemicals
- Medical products
- Heavy equipment (cranes, mining equipment, truck components)
- Computer networking equipment and computer software
- Web-based communication systems
- Consumer and sports products
- Heavy equipment
As a member of the Commercial Panel of the American Arbitration Association, Mr. Rupert has acted as an arbitrator on intellectual property cases involving the following:
- Utility patents
- Design patents
- Trade secrets
- Unfair competition
- Attorney fee disputes
Amicus Briefing Experience
In his amicus curiae briefing, he has authored or co-authored briefs in the following intellectual property cases which were filed in the noted cases on behalf of the Intellectual Property Association of Chicago (IPLAC) or the American Bar Association (ABA):
- Bilski v. Kappos, U.S. Supreme Court No. 08-964,
filed on behalf of IPLAC August 5, 2009, co-author, on the merits, decision at 561 U.S. 593 (2010);
- Pactiv, LLC v. Michelle K. Lee, U.S. Supreme Court No. 16.205,
filed on behalf of IPLAC September 9, 2016, counsel of record, on Petition for Writ of Certiorari, decision at 137 S. Ct. 248 (2016), petition denied;
- Oil States Energy Services LLC v. Greene’s Energy Group, LLC, U.S. Supreme Court
No.16-712, on behalf of IPLAC filed August 31, 2017, co-author, on the merits, decision at 138 S. Ct. 1365 (2018);
- NantKwest v. Matal, Federal Circuit No. 2016-1794 (Federal Circuit, seeking en banc review),
filed on behalf of the ABA January 23, 2018, co-author, decision at 898 F.3d 1177 (Fed. Cir. 2018, en banc);
- WesternGeco LLV v. Ion Geophysical Corporation, U.S. Supreme Court No. 16-0111,
filed on behalf of IPLAC March 2, 2018, counsel of record, on the merits, decision at 138 S.Ct. 2129 (2018);
- Helsinn Healthcare S.S. v. Teva Pharmaceuticals USA, Inc., U.S. Supreme Court
U.S. Supreme Court No. 17-1229, filed on behalf of IPLAC August 30, 2018, co-author, on the merits; decision at 138 S. Ct. 2678 (2018);
- Allen v. Roy A. Cooper, III, U.S. Supreme Court No. 18-877,
filed on behalf of IPLAC August 13, 2019, counsel of record, on the merits, case pending.
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, supply and distribution agreements, handled litigation settlements, and performed corporate due diligence reviews and transactions. His experiences also include patent prosecution in a wide range of technologies.
Mr. Rupert has been a deposition instructor for the National Institute for Trial Advocacy for years and is a member of the committee that prepared and revised 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).
- Washburn University School of Law (J.D., cum laude)
- Miami University (B.S.)
- U.S. Supreme Court
- U.S. Court of Appeals, Seventh Circuit
- U.S. Court of Appeals, Federal Circuit
- U.S. District Court, Central District of Illinois
- U.S. District Court, District of Minnesota
- U.S. District Court, Eastern District of Michigan
- U.S. District Court, District of Colorado
- U.S. District Court, Northern District of Illinois
- U.S. District Court, Northern District of Illinois, Trial Bar
- U.S. Patent and Trademark Office
Publications and Presentations
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:
- “ADR Involving Intellectual Property Disputes,” panel chair and presenter, co-sponsored by the American Arbitration Association, the Intellectual Property Association of Chicago, and the Center for Intellectual Property Law & Information Technology of the DePaul College of Law, DePaul College of Law, Chicago, Illinois, October 5, 2016.
- “Supreme Court Decision Today: Post-Expiration Patent Royalties are Unenforceable,” co-author, Marshall Gerstein Alert, June 23, 2015.
- “U.S. Supreme Court's Roadmap for Giving Preclusive Effect to ITC Decisions," World Intellectual Property Report, May 2015
- “Using ADR to Resolve IP Disputes,” presenter, American Intellectual Property Law Association, 2015 Spring Meeting, Los Angeles, California, May 1, 2015.
- “Malpractice Issues in IP Cases,” presenter, 7th Annual Program, Ethics in the Practice of Intellectual Property Law, sponsored by John Marshall Law School, Chicago, Illinois, April 24, 2015.
Community and Professional Involvement
- Washburn University, Alumni Fellow
- National Institute for Trial Advocacy, Deposition Instructor
- Washburn University School of Law, Advisor, Trial Advocacy Center
- DePaul University School of Law, Center for Intellectual Property Law & Information Technology Board of Advisors
- American Bar Association: Section for Dispute Resolution, Section of Intellectual Property, and Section of Litigation
- American Intellectual Property Law Association
- Richard Linn American Inn of Court
- Intellectual Property Law Association of Chicago, Amicus Committee (2011–present), Vice Chair of Litigation Committee (May 2010–May 2011)
- Homestead Ranchers Summer Collegiate Baseball Team, General Manager, Chicago Suburban Baseball League (2011–2016), Great Plains Collegiate Baseball League (2010)
- American Legion Post 42 Baseball Team Advisory Board, Evanston, Illinois (2008–2010)
- Manage litigation conducted in a foreign country involving trademark infringement and unfair competition.
- Court appointed counsel representing an indigent plaintiff suing a county sheriff and prison officials for civil rights violations relating to health treatments.
- Defense of patent infringement case involving transaction payments.
- 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.
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Trial Court and Appellate Court Experience
Mr. Rupert has handled jury trials involving patent infringements, trademark infringements, trade dress infringements, copyright infringements, breach of license agreements, unfair competition, and criminal defense matters.
Mr. Rupert has also handled bench trials and evidentiary hearings relating to breaches of license agreements, trademark infringements, unfair competition, patent infringements, patent claim constructions, and preliminary injunction hearings.
He has argued cases before the Courts of Appeals for the Federal Circuit and the Seventh Circuit and has argued substantive motions in state and federal courts in Illinois, New York, Michigan, Georgia, Florida, Delaware, California, Tennessee, and others.
Military and Government Service
- U.S. Air Force, 1968–1974; served to Captain, honorably discharged
- U.S. Air Force, Eastern Test Range, Range Measurements Laboratory, Patrick AFB, Florida, 1969–1972.
- U.S. Air Force, Foreign Technology Division, Wright Patterson AFB, Ohio, 1972–1974.
- U.S. Air Force, private consultant to the Foreign Technology Division, 1974–1981.