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Marshall J. Schmitt

Partner

Overview

Marshall’s practice focuses on resolving disputes regarding scientific issues and counseling clients in chemical and biotechnology matters. A skilled first chair litigator and trial lawyer, his practice includes helping clients develop strategies for obtaining and effectively enforcing their intellectual property rights.

Clients seek Marshall's advice to help solve complex intellectual property-related problems. His strong grasp of IP, together with effective use of internal investigations, enable him to understand how a dispute will impact the client’s business interest. His experience spans a wide spectrum of matters, including:

  • Patents, including prosecuting and defending American Invents Act trials before the U.S. Patent Trial and Appeal Board (PTAB)
  • Trade secrets and unfair competition
  • Trademarks
  • Copyright
  • Antitrust
  • Contract disputes, including federal terminations for default and False Claims Act
  • Insurance coverage 

Experience

Marshall’s trial experience spans a wide range of civil and criminal matters, including the following:

  • Trials before the Circuit Court of Cook County, Illinois, the U.S. District Courts for the Northern District of Illinois, the Southern District of New York, the Eastern District of Missouri, the Eastern and Western Districts of Michigan, the Western District of Wisconsin, the Middle District of North Carolina, and the U.S. Court of Federal Claims
  • Litigation before U.S. District Courts, including the Eastern and Western Districts of Michigan and the Northern District of California, and in the California Superior Courts (Los Angeles and San Diego)
  • Appeals before the U.S. Court of Appeals for the Seventh Circuit, the California Court of Appeals, the Wisconsin Court of Appeals, the Illinois Appellate Court, the United States Courts of Appeals for the Ninth and Federal Circuits, and the U.S. Supreme Court
  • Lead counsel in multiple post-grant review trials before the PTAB, where he has successfully prosecuted inter partes review petitions to Final Written Decision

Before joining the firm, Marshall worked as a clerk in the U.S. District Court for the Northern District of Illinois. Before attending law school, Marshall participated in research projects at Argonne National Laboratory and Amoco Chemicals Corporation.

 

Representative matters include:

  • Helped extend the precedential impact of Batson v. Kentucky, 479 U.S. 79 (1986), to all cases pending on direct appeal
  • Wrote amicus brief cited in unanimous opinion invalidating postal laws banning the mailing of unsolicited advertisements for condoms
  • Member of trial team on multiple trials regarding the largest government default at the time
  • Obtained rare finding of unclean hands that resulted in jury verdict being vacated in patent infringement action
  • Lead trial lawyer in inter partes proceeding that led to initial decision on the collateral estoppel effect of a decision not to institute an inter partes review on the basis that a ground is redundant
  • Lead counsel in two of the first inter partes review proceedings to reach final written decision
  • Lead counsel in inter partes proceeding giving rise to rare precedential decision holding that assignor estoppel does not apply in inter partes proceedings
  • Lead counsel in one of the first appeals to clarify the United States Supreme Court decision in In re Cuozzo

Honors & Recognitions

  • The Best Lawyers in America®, Patent Law, 2016-present
  • "Illinois Super Lawyers" list, Intellectual Property Litigation, Super Lawyers magazine, 2012-present

Professional Activities

  • Member, Federal Circuit Bar Association
  • Member, American Intellectual Property Law Association
  • Member, Intellectual Property Law Association of Chicago
  • Member, American Bar Association, Litigation, Intellectual Property and Antitrust Law Sections
  • Member, Illinois State Bar Association, Former Chair, Antitrust and Unfair Competition Section Council
  • Member, Chicago Bar Association

Education

Admissions

Community Involvement

  • Member, Rotary Club of Chicago, 2010-present; Member, Board of Directors and Service Chair, 2012-present
  • Member, Downers Grove Rotary Club, 1999-2010
  • Member, Downers Grove, IL Elementary School District 58 Board of Education, 2001-2009; Vice President, Chair of Policy Committee, 2005-2009
  • Member, Board of Control of SAED, DuPage County special education cooperative, 2001-2009; Chair of Board, 2007-2009
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