Overview
Paul is a trial lawyer who focuses his practice on intellectual property and high profile litigation matters involving complex technical issues. As one example, Paul was trial counsel for BP in the Deepwater Horizon matter, developing and trying successfully BP’s strategy with respect to the blowout preventer and source control technology. Paul has extensive experience litigating intellectual property and complex litigation matters in federal and state courts, as well as the United States International Trade Commission. He has tried numerous patent infringement and litigation cases in various district courts around the country.
In 2011, Paul was selected as one of 40 Illinois Attorneys Under 40 to Watch by the Law Bulletin Company in a special supplement to the Chicago Daily Law Bulletin and Chicago Lawyer magazine. Paul has also been named as an "Illinois Super Lawyer" by Super Lawyers Magazine every year since 2013 and as an “IP Star” by Managing Intellectual Property since 2014.
Clients have called on Paul’s litigation and trial skills in disputes involving a wide range of technical areas, ranging from medical devices to semiconductor chips to automotive components. Paul, however, has spent a considerable portion of his practice focusing on disputes involving telecommunication technology.
Paul received a B.S. degree in Mechanical Engineering from the University of Illinois, and graduated magna cum laude from the University of Illinois College of Law, where he was elected to Order of the Coif.
Experience
Representative Matters
Paul has successfully handled a number of intellectual property and complex litigation matters on behalf of numerous large and small entities covering a broad range of technologies. Paul also has extensive experience counseling intellectual property owners on management of their patent portfolios through active licensing programs and negotiating intellectual property licenses for his clients.
Representative matters in which Paul was actively involved include:
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In re General Motors LLC Ignition Switch Litigation: Represents General Motors in multidistrict federal and state civil litigation relating to vehicle recalls.
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Strautins v. Trustwave (N.D. Ill.); Morgan v. Trustwave (S. Car. Cir. Ct.): Lead counsel for Trustwave in defense of claims emanating from high profile South Carolina Department of Revenue data security breach; resolved after successful dismissal of claims.
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In re: Oil Spill by the Oil Rig Deepwater Horizon in the Gulf of Mexico April 20, 2010 (MDL 2179): Trial counsel for BP in the Deepwater Horizon oil spill litigation. In the civil litigation trials, Paul was a courtroom member of the trial team that defended BP from claims by the U.S. Government, certain Gulf States, and various BP contractors.
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Kaminski v. BP (M.D. Fla.): Lead counsel for BP in breach of contract and intellectual property theft suit for alleged use of his idea to contain and stop the Deepwater Horizon spill; dismissed after successful summary judgment ruling shortly before trial. One of numerous intellectual property disputes with similar claims against BP, all of which have been successfully resolved to date.
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In re: BP Lubricants USA, Inc. (N.D. Ill.): Counsel for BP in successful mandamus petition to Federal Circuit resulting in dismissal of Simonian false marking suit for failing to meet pleading standards and setting oft cited precedent that Rule 9(b) requires false marking claims must be plead with sufficient particularity and that conclusory allegations that a defendant should have known the patent expired are insufficient.
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In the Matter of Certain Semiconductor Chips with Minimized Chip Package Size and Products Containing Same (USITC): Trial counsel for Motorola in patent infringement investigation involving semiconductor chip packaging technology; settled shortly after favorable trial ruling.
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In the Matter of Certain Short-Wavelength Light Emitting Diodes, Laser Diodes and Products Containing Same (USITC): Lead counsel for Motorola in patent infringement investigation involving light emitting diode technology; settled shortly before trial.
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Motorola, Inc. v. Digital Technology Licensing, LLC (S.D.N.Y) and Digital Technology Licensing, LLC v. Cellco Partnership d/b/a Verizon Wireless (D.N.J.): Counsel for Motorola and Verizon Wireless in patent infringement litigation involving digital cellular technology; settled shortly before trial.
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Shuffle Master, Inc. v. Gaming Entertainment Inc. (D. Nev.): Counsel for Shuffle Master in a patent infringement matter involving specialty table games, successfully defending against patent infringement claim and prevailing on patent infringement counterclaim on summary judgment.
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Illumina, Inc. v. Affymetrix, Inc. (D. Del.): Trial counsel for Illumina in a six-patent and unfair competition case involving control over the DNA microarray technology market; settled after trial.
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In re United Air Lines, Inc. (Bankr. N.D. Ill.): Lead counsel for United in its chapter 11 proceeding with respect to all disputes involving intellectual property.
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Stratos, Inc. v. Picolight, Inc. et al. (D. Del.): Trial counsel for Honeywell in a patent infringement case involving optoelectronic technology; settled during trial.
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GTFM, Inc. v. The William Carter Co. (S.D.N.Y.): Counsel for The William Carter Co. in successful trademark litigation involving use of mark with certain clothing; settled after favorable summary judgment ruling.
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The William Carter Co. v. H.W. Carter & Sons (Trademark Trial & Appeal Board): Counsel for The William Carter Co. in a series of successful trademark oppositions involving the Carter's trademark.
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Fort James, Inc. v. Solo Cup Co. (E.D. Wis.): Trial counsel for Fort James (Dixie) in a patent infringement case involving consumer product technology; settled after trial.
Prior Experience
After graduating with a Mechanical Engineering degree, Paul worked as a design engineer in the automotive industry designing emission control systems (EGR valves) for various GM vehicle platforms.
More
Thought Leadership
Publications
"4 Years In, Inter Partes Review May Not Be The Best Strategy," Law360, March 2017
Financier Worldwide Magazine, October 2015 (roundtable member)
“Roundtable: Resolving patent disputes,” Financier Worldwide Magazine, October 2014 (roundtable member)
"Established Royalties: The Best Measure of a Reasonable Royalty," Patent World (May 2002)
Credentials
Admissions & Qualifications
- 1999Illinois
Courts
- United States Court of Appeals for the Eleventh Circuit
- United States District Court for the Eastern District of Michigan
Education
- University of Illinois College of LawJ.D.magna cum laude1999
Order of the Coif
Notes Editor, University of Illinois Law Review
- University of Illinois at Urbana-ChampaignB.S., Mechanical Engineering1993