Barry Irwin is a partner in Kirkland's intellectual property department. For over ten years, Barry has been a first-chair litigation attorney on high-stakes patent, copyright, trademark, trade secret, restrictive covenant, unfair competition and antitrust matters, including:
a $500 million, multi-patent infringement defense, winning a complete defense verdict;
an offensive breach of fiduciary duty action resulting in over $16 million of settlements;
an offensive patent infringement action wherein the jury awarded $7.3 million, and the court permanently enjoined the defendants' infringement;
four different trade secret/restrictive covenant preliminary injunction evidentiary hearings, each of which resulted in a complete victory, including one involving a case of first impression and the court precluding a former sales representative from soliciting "high-volume" customers;
a successful trademark preliminary injunction evidentiary hearing;
obtaining numerous preliminary injunctions in contested patent and trademark actions that were decided without an evidentiary hearing, and successfully defending against several other such requests;
obtaining summary judgment on an offensive trade dress infringement claim, and summary judgment on each of the defendants' Walker-Process antitrust, unfair competition, interference with contract and trade libel counterclaims; and
obtaining summary judgment that 48 different purported trade secrets allegedly misappropriated by his client were either in the public domain, or not used by his client.
Barry also handles reexamination and post grant patent challenge proceedings, and advises clients on strengthening of intellectual property portfolios to protect key products, including broadening existing intellectual property portfolios and securing rights to third party intellectual property.
Barry is counsel to numerous bands and musicians, addressing music law related issues, including drafting partnership agreements, preparing copyright filings, negotiating recording contracts, litigating termination of recording contracts, and winding up band assets upon dissolution.
Barry has been a supervising attorney for numerous pro bono matters involving a broad range of issues and hundreds of attorney hours annually, including matters involving: the confinement conditions at the Cook County Juvenile Detention Center; employment discrimination; a trial of an aggravated assault charge resulting in acquittal; and serving as guardian ad litem.
Barry's patent practice has included a diverse range of technologies, including automatic vehicle identification systems, cable television systems, casino table games and table game monitoring systems, cellular telephony, clothes washers, cold-rolled motor laminate steel, computer memory devices, digital signage, electronic games, encryption systems, enhanced facsimile services, internet display and content delivery systems, radio frequency identification (RFID) systems, ophthalmic surgical equipment, telephone call back systems, and video, audio and data streaming systems.
Barry’s trade secret practice received high praise from the 2008 edition of The Legal 500 U.S., who in their description of Kirkland’s trade secret practice noted that “in Chicago, Barry Irwin comes in for praise as ‘superb.’”
Barry's copyright practice has also involved a diverse range of media, including books, music, software and lawn statuary.
Action Gaming, Activision TV, Alcon Laboratories, AMF Bowling, Covidien, International Game Technology, Kapsch, Massarelli Lawn Ornaments, Mark IV, Motorola, Inc., Nobel Biocare, Office Depot, Peripheral Devices Corp., Shuffle Master, Inc., Smiths Medical, WorldGate Communications, Wowza Media Systems.
Patent Matters (Representative Lead Counsel Matters)
Sturdy Floss v. CVS and Ranir (S.D. Cal. 2012-present) Lead counsel for CVS and Ranir in patent infringement matter.
Adobe v. Wowza Media Systems (N.D. Cal. 2011-present) Lead counsel for Wowza Media System in a multi-patent infringement defensive matter, with offensive antitrust, fraud and unfair competition claims.
Activision TV v. NEC, et al. (N.D. Ill 2010-2012) Lead counsel for Activision TV in multi-patent patent assertion matter; settled on confidential terms.
Mark IV v. Transcore (D. Del. 2009-2011) Lead counsel for Mark IV in multi-patent patent assertion matter. Argued claim construction involving over 30 terms, prevailing on each construction; settled on confidential terms.
Indufil v. Hy-Pro (N.D. Ill. 2009) Lead counsel for plaintiff-patentee obtaining consent judgment and permanent injunction against accused infringer.
IQ Biometrix (D. Del. 2009) Lead counsel for IQ Biometrix in several patent infringement matters resulting in numerous license agreements and consent judgments.
Borden v. AMF Bowling (N.D. Ohio 2007-2008) Lead counsel in patent infringement defensive matter related to glow-in-the-dark bowling, which settled early on mutually beneficial terms after prior art disclosed to patentee.
Shuffle Master (2003-2009) First-chair in numerous patent infringement matters involving a diverse range of technologies, including automatic card shufflers, proprietary table games, and table game monitoring systems. Representative outcomes include, obtaining a $800,000 default judgment and permanent injunction (after the Court agreed with Shuffle Master's position on every disputed claim term in two asserted patents); obtaining preliminary injunctions in two different patent infringement matters; successfully resolving several defensive patent infringement claims on extremely favorable terms, including one resolution involving a payment from the patentee to Shuffle Master; and obtaining summary judgment on inequitable conduct and on-sale bar defenses raised against a Shuffle Master patent in an offensive patent infringement matter.
International Game Technology (1999-2008) First or second chair in numerous patent infringement matters involving a diverse range of technologies, including "virtual reel" technology, "method of play" patents, cashless technology, authentication technology and progressive systems. Representative outcomes include, obtaining a multi-million dollar jury verdict; preserving another multi-million dollar verdict from a new trial challenge; and obtaining several preliminary injunctions.
Avaya (2003-2006) Lead counsel for Avaya in a multi-patent infringement defense involving enhanced facsimile services, which was resolved on favorable terms, after the plaintiff was required to identify representative claims (from the 288 claims contained in the patents).
Action Gaming (2001-2005) Lead counsel for Action Gaming in several patent infringement matters involving patented poker games, including first-chairing several successful preliminary injunction arguments and obtaining dozens of voluntary cease and desist agreements.
Cygnus v. Telegroup (D.N.J. 2001) First-chair in a patent infringement damage trial, where the case was "reverse-bifurcated" such that damages were tried first and verdict was a small fraction of estimated cost of a liability trial.
WorldGate Communications (2000-2003) Lead counsel for WorldGate Communication in several patent infringement matters involving data over cable technology and interactive television guides. Barry obtained a stipulation of non-infringement in one matter after prevailing at the claim construction stage, and a voluntary dismissal of the claims in another after the exchange of claim construction briefs.
Outboard Marine v. Orbital Engine (N.D. Ill. 1998) Counsel for Outboard Marine in patent declaratory judgment action involving fuel injection technology that was resolved early with a favorable business solution.
Rotec v. Potain, et al. (C.D. Ill. 1998) Lead counsel for Potain in a case where Barry convinced the court to dismiss Potain for lack of personal jurisdiction.
Security & Access v. Motorola (D. Del. 1997) Second-chair in two-week patent infringement jury trial that resulted in a complete defense verdict for client, Motorola. Barry was responsible for discovery, trial preparation, and witness examination related to non-infringement, invalidity and equitable defenses.
Copyright/Computer/Entertainment Matters (Representative Matters)
Wiley and AIP v. McDonnell, Boehnen, Hulbert & Berghoff (N.D. Ill. 2012-present) Lead counsel for MBHB, in copyright infringement matter.
Crider v. Alan Rado (N.D. Ill. 2009) Lead counsel for plaintiff obtaining consent judgment and permanent injunction.
Zimnicki (N.D. Ill. 2008-2012) Lead counsel for Zimnicki in copyright infringement matters relating to decorative Christmas light displays resulting in numerous settlements totaling more than seven figures.
Ameriprise v. Oppenheimer (2007) Lead counsel for Ameriprise in a copyright infringement matter relating to personal financial management pamphlet wherein a permanent injunction against continued distribution of the infringing work was obtained.
Massarelli Lawn Ornaments (2000-present) Lead counsel for Massarelli Lawn Ornaments in connection with numerous copyright infringement matters, both offensive and defensive, relating to lawn and garden ornaments.
CIMLINC v. SofTech (AAA, Indiana 1999-2000) Second-chair for CIMLINC in two separate adversarial proceedings, which involved claims and counterclaims arising from sale of software business. Barry was responsible for taking and defending depositions, preparing and examining lay and expert witnesses, cross examining lay and expert witnesses, and closing arguments at the hearings.
Trademark and Trade Dress Matters (Representative Matters)
Better Government Association v. Better Government Association (N.D. Ill. 2009) Lead counsel negotiating consent judgment against accused infringer.
Massarelli v. Pace (NAF 2008) Lead counsel for Massarelli in successful arbitration action requiring the defendant to transfer infringing domain name.
GCA Industries v. C&L Performance (D. Ariz. 2008) Lead counsel for GCA in a trademark concurrent use dispute, which was resolved with Barry's client retaining exclusive rights to the mark.
Shuffle Master v. Gaming Entertainment, Inc. (D. Nev. 2006) Lead counsel for Shuffle Master, obtaining preliminary injunction, summary judgment and permanent injunction on Shuffle Master's trade dress claims, dismissal of several of Defendants' counterclaims for failure to state a claim, and summary judgment on Defendants' remaining claims, including antitrust, unfair competition and trade libel.
Rand McNally (N.D. Ill. 2005) Lead counsel for Rand McNally in trademark and copyright dispute with former distributor.
Sportcraft v. Wilson Sporting Goods (N.D. Ill. 2001) Lead counsel for Sportcraft in matter involving alleged violation of a trademark license agreement.
Apple's Bakery v. Big Apple Bagels (Peoria County 1995) First-chair at preliminary injunction evidentiary hearing for Big Apple Bagels in defense of trademark infringement claim. Barry was responsible for preparing and examining all witnesses at hearing. Case was resolved on favorable terms prior to ruling.
Trade Secret/Unfair Competition Matters (Representative Matters)
Shuffle Master v. MindPlay, et al. (D. Nev. 2006) Lead counsel for Shuffle Master, obtaining summary judgment on, and dismissal of, a trade secret counterclaim with the Court finding that 48 different purported trade secrets were either in the public domain, or not used by his client.
Nobel Biocare v. Astra Tech, et al. (N.D. Ill 1999) First-chair for Nobel Biocare, obtaining a preliminary injunction preventing client's former salesman from contacting "high volume" customers after a two day evidentiary hearing.
CFC v. Spectratek (Ill. Superior Court, Dupage County 1999). First-chair for Spectratek in a case where a misappropriation of trade secret claim was asserted against client and favorably resolved prior to preliminary injunction hearing.
PDC v. Ramberg, et al. (N.D. Ill. 1995) Second-chair for PDC in series of multi-day evidentiary hearings where client asserted breach of restrictive covenants and trade secret misappropriation. Barry was responsible for coordinating and taking expedited discovery and examining the majority of witnesses at each preliminary injunction hearing where Barry obtained preliminary injunctions against the defendants and the defendants were ultimately forced to go out of business.
I.S.I. Claims Services v. Wherley (Peoria County 1994) First-chair for Wherley in a case where misappropriation of trade secrets and breach of restrictive covenant claims were asserted against client. Barry was responsible for discovery and examining all witnesses at the multi-day preliminary injunction evidentiary hearing. Case was favorably resolved prior to court's ruling.
Latanick v. Kimberly-Clark (N.D. Ohio 1994) Third-chair for Kimberly-Clark in trade secret jury trial. Barry was responsible for taking and participating in depositions, examining witnesses in a mock trial, preparing and arguing jury instructions, preparing and arguing motions in limine (9 of 10 granted), and preparing witnesses for trial. Case was favorably resolved during trial.
Guardian Gaming v. Montel Williams (Nev. 2009) Lead counsel on breach of contract case against Montel Williams and his company International Poker League resulting in dismissal and settlement satisfactory to all parties.
1st Technology v. Betcorp (D. Nev. 2008) Lead counsel in bankruptcy court proceeding where, pursuant to Barry's motion, the Nevada bankruptcy court recognized Australian voluntary liquidation proceedings under Chapter 15 of the Bankruptcy Code, and as a result underlying patent infringement case was automatically stayed.
State of Illinois v. Murphy (Peoria County 2008) First chair in criminal proceedings where client was acquitted of battery charges.
Carpenter's Union v. Lake Eric Land (N.D. Ind. 2006-2007) Lead counsel in breach of fiduciary duty action resulting in over $16 million of settlements being obtained for client, Carpenter's Union.
Jimmy Doe, et al. v. Juvenile Temporary Detention Center (N.D. Ill. 2004-2007) Counsel for class of all children detained at the Cook County Juvenile Temporary Dentention Center, which resulted in a consent decree requiring improved confinement conditions for all children held at the facility.
Memberships & Affiliations
Board Member, Lawyer's for the Creative Arts
Member, Richard Linn American Inn of Court
Member, Intellectual Property Owners Association (Copyright Law and Practice/Litigation Committees)
Member, American Bar Association, Intellectual Property
Member, Intellectual Property Law Association of Chicago
Member, Notre Dame Club of Chicago, Attorney Networking Committee, Core Committee
Board of Directors, ClothesLink Association (1999-2003) (defunct)
Volunteer Attorney, Chicago Legal Clinic and Lawyers for Creative Arts
Vice President, DIL Corp. (2000-present)
Adjunct Professor, University of Notre Dame Law School, Patent Litigation; Entertainment Law
Pro bono efforts featured in articles: Pro Bono Group Lends Helping Hand to Creative Arts (Chicago Daily Law Bulleting 2010) and For Art's Sake (The Deal Magazine 2010)
Named a "Leading Lawyer" in Intellectual Property by Leading Lawyers Network (2004-2011)
Named an "Illinois Super Lawyer" by Law & Politics (2005-2013)
Martindale Hubbell "AV Rated" in first year of eligibility and each year thereafter
Federal Circuit Bar Association, Panel, Patent Litigation in the Northern District of Illinois (2012).
IPLAC, Paper and Speaker, Copyrighting Trademarks: Misuse or Fair Use: Omega S.A. v. Costco Wholesale Corporation, CV 04-5443 ("Omega")(2012).
University of Notre Dame, 1st Annual Emerging Issues in IP Symposium, Presenter, Post Grant Reviews After the AIA (Ex Parte Reviews, Inter Partes Reviews, Post grant Reviews, Supplemental Examination and Derivation Proceedings (2012).
IPO, Paper, Impact of the Misjoinder Provision of the America Invents Act (2011).
University of Notre Dame, Guest Lecturer (2011, passim).
Houston Intellectual Property Law Institute, Speaker, Top Ten Developments in IP Licensing (2011).
Linn Inn, Speaker, Civility and the Practice of Law (2011); Presenter, Designing Around Patents (2011); Vice Chair/Presenter, Ethical Issues Arising from Client Pitches (2010).
American Bar Association, National Appellate Advocacy Competition, Judge (2011).
Kirkland & Ellis, Kirkland Institute of Trial Advocacy, Instructor Judge (1999-2011, three times/year).
Kirkland & Ellis Technology Seminar, Speaker, Patent Reviews at the USPTO After the AIA (2012), Northern District of Illinois -- The Newest Local Patent Rules (2010), Protecting Yourself from Willfulness (2008), Copyright v. Technology? (2002), Digital Millennium Copyright Act (2000), Recent Developments in IP Law (1999).
Illinois Math and Science Academy, Speaker, Protecting Your Ideas (2009).
Nevada Bar Association, Speaker, Green Claims in Advertising (2008).
Kirkland & Ellis Advertising and Trademark Seminar, Speaker, New Developments and Recent Trends (2008).
Kirkland & Ellis Annual Retreat, Speaker, Alternative Dispute Resolution: Mediation, Arbitration and Summary Jury Trials (2008).
Practicing Law Institute, Speaker, Key Issues in Patent Infringement Litigation (2008).
Practicing Law Institute, Chair and Speaker, Understanding Basic Copyright Law (1999-2004).
John Marshall Law School, Speaker, Contemporary Problems in Computer Law (passim).
DePaul Law School, Speaker, Implications of Festo (2001).
From 1992-1995, Barry worked at Brinks, Hofer, Gilson & Lione as an intellectual property associate.
During law school, Barry worked at the patent boutique firm, Oltsch, Knoblock and Hall, and the general litigation firm, Jones, Obenchain, Ford, Pankow.
Before starting law school, Barry worked for Pratt & Whitney Government Engine Business as a design and project engineer.
Northern District of Illinois (1992), Trial Bar (1999)
Northern District of Ohio (1994)
Central District of Illinois (1998)
District of Delaware (1998)
District of New Jersey (2000)
District of Minnesota (2001)
Northern District of Georgia (2004)
Northern District of Indiana (2005)
Northern District of Pennsylvania (2010)
Northern District of California (2011)
District of Nevada (2005)
Southern District of New York (2007)
Sixth Circuit (1994)
Seventh Circuit (1994)
Federal Circuit (1998)