Serena J. Pruitt
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 and business methods.
Representative Matters
Ole K. Nilssen v. Osram Sylvania, Inc., Civil Action No. 01-CV-3585 (N.D. Ill.): Represented Osram Sylvania in an eleven-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 ten IP decisions of 2008. In addition, the district court held that the case was exceptional and warranted an award of attorneys' fees 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 - Field Day Committee Chair, Board of Managers
Other Distinctions
Registered Patent Agent, February 2004-presentPublications
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
