Serena J. Pruitt - Partner

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Serena J. Pruitt

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Chicago
Phone: +1 312-862-2203
Fax: +1 312-862-2200
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Professional Profile

Serena Pruitt is an intellectual property partner in Kirkland’s Chicago office and is registered to practice before the U.S. Patent and Trademark Office. Serena focuses her practice primarily on patent and other technology-related litigation and counseling. She has represented clients in a diverse range of technologies, including medical devices, DNA microarrays, lighting, digital technology, cellular telephony, computer software and business methods.


Representative Matters

Front Porch Entertainment v. Procter & Gamble Productions (December 2012): Represented Front Porch in preliminary injunction hearing involving dispute over online licensing rights to television movies. After multi-day evidentiary hearing, court granted a mandatory injunction.

Ole K. Nilssen v. Osram Sylvania, Inc., Civil Action No. 01-CV-3585 (N.D. Ill.): Represented Osram Sylvania in an 11-patent case involving electronic ballast and CFL technologies. After a six-day bench trial on inequitable conduct, the district court held all eleven patents-in-suit unenforceable and entered defense verdict for client (440 F.Supp.2d 884 (N.D.Ill. 2006)). The Federal Circuit subsequently affirmed, 504 F.3d 1223, and the Supreme Court denied certiorari. The decision was recognized as one of the top 10 IP decisions of 2008. In addition, the district court held that the case was exceptional and warranted an award of attorneys’ fees and costs of over $6.1 million to Osram; that ruling was affirmed also.

Affymetrix, Inc. v. Illumina, Inc., Civil Action No. 04-901 JJF (D. Del): Represented Illumina in a six-patent and unfair competition case involving control over the DNA microarray technology market.

Baxter Healthcare Corporation, et al. v. Fresenius Medical Care Holdings, Inc., et al., Civil Action No. C 07-01359 PJH (N.D. Cal.): Represented Baxter in a nine-patent infringement case relating to peritoneal dialysis systems and related disposable items and equipment.

Lumination LLC v. Fawoo Tech North America LLC, et al. Civil Action No. 1:10-cv-01069 (N.D. Ohio): Represented Fawoo in a patent case relating to LED lighting technology.


Memberships & Affiliations

IPLAC, Intellectual Property Law Association of Chicago - Treasurer and Field Day Committee Chair


Other Distinctions

Registered Patent Agent, February 2004-present

Publications

S Gondek & GL Krauss, How do we hear while we sleep?: Direct cortical recordings demonstrate sequential activation of auditory cortex and lateral frontal cortex during tone audition in sleep, 50(4) Neurology, A68 (1998) & 106 (Suppl. 1001) Electroenceph. clin. Neurophysiol., PS13-25 (1998). 

Platform presentation at 50th Annual meeting of the American Academy of Neurology, Minneapolis, MN (1998). 

Poster presented to 9th European Congress of Clinical Neurophysiology, Slovenia (1998). 

Received national exposure including a CNN science story, BBC, Scientific American segments, and U.S. wire service.

GL Krauss, S Gondek, F Shen, The Scarlet E:  The presentation of epilepsy in the English language print media, 54 Neurology, 1894-1989 (2000)

Prior Experience

Kirkland & Ellis LLP, Chicago, IL
Summer Associate, Summer 2003

Fitch, Even, Tabin & Flannery, Chicago, IL
Summer Associate, May 2002 - August 2003

Welch Allyn, Inc., Skaneateles Falls, NY
Legal & Engineering Intern, Summer 2001


Courts

2003, Registered to practice before the U.S. Patent and Trademark Office

2005, United States District Court for the Northern District of Illinois

2005, Federal Circuit

2007, Western District of Tennessee
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