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Chicago Office

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Related Practices

• Litigation
• Patents
• Trade Secrets and Unfair Competition
• Intellectual Property Transactions
• Mechanical Technologies

Education

Charles H. Mottier

Member

Charles Mottier joined the law firm as an associate in 1981 and was elected to the firm's shareholdership in 1986.  His present practice involves all aspects of intellectual property law, including litigation, prosecution and counseling.  His technical expertise is in mechanical engineering and fluid dynamics.  At Leydig, Voit & Mayer, he chairs the firm's Marketing Committee, having previously served in various aspects of the firm's management, including Chair of the Professional Development and Recruiting Committees.

Mr. Mottier has extensive experience in formulating patent strategies and in managing patent portfolios, as well as in counseling and rendering opinions on patent validity, patent infringement, technology licensing, and the protection of trade secrets and other proprietary information.  He has advised public and private companies in connection with sensitive corporate transactions, including asset purchases, mergers and acquisitions, joint ventures, licensing arrangements and employment issues.  Mr. Mottier litigates contested matters and has represented clients in both bench and jury trials. 

He regularly lectures and conducts workshops and seminars at universities, colleges, corporations and trade organizations, regarding patents, trademarks, copyrights, trade secrets and unfair competition.  For nearly 15 years, Mr. Mottier was a member of the adjunct faculty at the University of Illinois College of Engineering (Urbana-Champaign), where he lectured on intellectual property issues.

Mr. Mottier received a Bachelor of Science degree in general engineering in 1978 and a J.D. degree in 1981 from the University of Illinois, where he was a James Scholar. In 1980, he received a certificate of advanced study in constitutional legal history from Magdalen College, Oxford University. While in law school, Mr. Mottier was a member of the Illinois Bar Journal.

Professional Affiliations

• American Bar Association, Litigation and Personal Rights Sections
• American Intellectual Property Law Association (AIPLA)
• Intellectual Property Law Association of Chicago (IPLAC)
• Intellectual Property Owners Association (IPO)
• The Lawyers Club of Chicago

Articles and Publications

• "Perils of inventorship," Chicago Lawyer, October 2009
• "Design patents: clarified and strengthened," Chicago Lawyer, April 2009
• Mr. Mottier has been an editor of and contributor to the firm's quarterly Newsletter since 2001

Honors

• AV^® Preeminent™ Peer Review Rated (Highest Rating) – Martindale-Hubbell
• Selected by peers as a Leading Lawyer in Intellectual Property Law – Leading Lawyers Network
• Named in the Illinois Super Lawyers list, Intellectual Property
• Listed among the Top Lawyers in Illinois in Intellectual Property Law – Chicago Lawyer

Representative Matters

Mr. Mottier has worked with a wide range of businesses, from multinational corporations to start-ups, as well as individuals. Representative clients include: Barnes International; Caterpillar Inc.; C.S. Gibbs Corporation; Deublin Company; Dynamic Logic, Inc.; Eclipse, Inc.; Electro Cam Corporation; Elkay Manufacturing Company; Fresenius Medical Care North America; Invensys, plc; Morrisey Associates, Inc.; Noss Company; RailRunner N.A.; Ranco, Inc., of Delaware; Robertshaw Controls Company; Rockford Acromatic Products Co.; Rockford Manufacturing Group; Turkington APV USA; Village Ventures; W.A. Whitney Co.

Contested Proceedings (Clients represented are underscored)

• Medversant Technologies, LLC v. Morrisey Associates, Inc., Civil Action No. 2:09-cv-05031 (C. D. California) (Action for patent infringement)
• Custom Cutlery, Inc. v. Clear Lam Packaging, Inc., Civil Action No. 1:09-cv-3082 (N.D. Ill., Eastern Division) (Action for infringement of design patent)
• KAB Enterprise Co., Ltd. v. Ursich Electrical Products, Inc.;
  Ursich Electrical Products, Inc. v. KAB Enterprise Co., Ltd. and
  Woods Industries, Inc. et al.
  Civil Action No. 1:07-cv-02864 (N.D. Ill., Eastern Division)
  (Action for infringement of electrical plug patent)
• KMC Exim Corporation v. Pacific World Corporation,
  Civil Action No. 07-cv-913
  (U.S. District Court, E.D. N.Y.)
• Kiss Nail Products, Inc. v. Pacific World Corporation,
  Civil Action No. 07-cv-912 (U.S. District Court, E.D. NY)
• Concord Brands, ULC et al. v. Taste of Nature, Inc.,
  Civil Action No. 1:07-cv-00059 (N.D. Illinois)
• Newell Operating Company v. Article, Inc.,
  Civil Action No. 06C50101 (N.D. Ill., Western Division)
  (Action for infringement of design patent)
• Parker-Hannifin Corp. and Parker Intangibles LLC v. HydraForce, Inc.,
  Civil Action No. 06-CV-3333 (N.D. Illinois)  (Action for infringement of valve patent)
• Tieman Development B.V. and Optelec U.S., Inc. v. Freedom Scientific, Inc.,
  Civil Action No. 06CV2802 (N.D. Illinois, Eastern Division)
• The Coleman Company, Inc. v. Dollar Tree Stores, Inc., and Dollar Tree Distribution, Inc.,
  Civil Action No. 03-1369-WEB (D. Kan.)  (Action for infringement of design patent)
• Hawker Energy Products, Inc. and Hawker Power Systems, Inc. v. NorthStar Battery Company, LLC, et al.,
  Case No. 101CC1261 (Circuit Court of Greene County, Missouri) (Action for
  misappropriation of trade secrets)
• Hawker Energy Products, Ltd. v. NorthStar Battery Company, LLC, et al.,
  Civil Action No. 03-332-CV-S-JTM (W.D. Mo., Southern District) (Action for
  patent infringement of patent relating to battery terminals)
• Philips Domestic Appliances and Personal Care B.V. v. Salton, Inc.,
  Civil Action No. 03-CV-8496 (N.D. Ill. Eastern Division) (Action for
  patent infringement concerning single serve coffee maker)
• Synovate, Inc. v. Ashref Hashim, The Blackstone Group and The Blackstone Group, Inc.,
  No. 03L003874 (Circuit Court of Cook County, Ill., Civil Dept., Law Division)
  (Action for breach of contract, payment of monies owed)
• SIG Stewart Systems, f/k/a SASIB Bakery North America, Inc. v. APV Baker,
  Civil Action No. 4:01 C 245 (E.D. Tex., Sherman Division)
• APV North America, Inc. v. SIG Simonazzi North America, Inc.,
  Civil Action No. 01-840-JJF (D. Del.)
• Invensys Building Systems, Inc. v. Tridium, Inc.,
  Civil Action No. 00 C 50168 (N.D. Ill., Western Division) (Action for copyright infringement, misappropriation of trade secrets, interference with contract rights)
• Appleton Electric LLC v. Cooper Industries, Inc.,
  Civil Action No. 00 C 5463 (N.D. Ill., Eastern Division) (Action for patent infringement)
• Invensys Building Systems, Inc., f/k/a Barber-Colman Company v. Streamline Software, Inc.,
  David M. Stutt and Mary Stutt,
  99 2286 FHX ROS (D. Arizona) (Action for copyright infringement, misappropriation of trade secrets and interference with contract rights)
• Elkay Manufacturing Company v. Blackhawk Molding Co., Inc., Walter E. Hidding,
  Douglas J. Hidding and Robert D. Hidding,
  Civil Action No. 98 C 4797 (N.D. Ill., Eastern Division) (Action for patent infringement
  and breach of contract)
• Honeywell Inc. v. The Foxboro Company,
  Civ. 96-1949 PHX RGS (D. Arizona)
  (Action for patent infringement)
• The Foxboro Company v. Honeywell, Inc.,
  Civil Action No. 96-10734-RCL (D. Mass.)
  (Action for patent infringement, tortious interference with contract)
• Lucas Aerospace Ltd. v. Unison Industries LP,
  Civil Action 93-525 MMS (D. Del.) (Actions for patent infringement and declaratory judgment by Lucas)
• Unison Industries LP v. Lucas Industries PLC,
  Civil Action 93 C 20249 (N.D. Ill., Western Div.) (Action for patent infringement)
• Robert M. Blumenthal and Andreas T. Melville v. Barber-Colman Holdings Corp.,
  Barber-Colman Company and Surface Combustion, Inc.,
  (Civil Action No. 90C20365) (N.D. Ill., Western Division);
  Blumenthal and Melville v. Barber-Colman Holdings Corp., Barber-Colman Company and Surface Combustion, Inc., Docket Nos. 93-1005, -1006 (Fed. Cir.) (Action for patent infringement)
• Floyd Minks v. Unison Industries, Inc.,
  (Case No. CI-89-2939) (Circuit Court of the Ninth Judicial Circuit,
  Osceola County, Florida) (Action for breach of contract, misappropriation of trade secrets)
• GNB Incorporated v. Exide Corporation and General Battery Corporation,
  Civil Action No. 88-407 (D. Del.); GNB Battery Technologies, Inc. v.
  Exide Corporation and General Battery Corporation, Docket Nos. 95-1248, - 1348-1371
  (Fed. Cir.) (Action for patent infringement)
• South African Inventions Development Corporation v. Blackhawk Molding Co., Inc.,
  Civil Action No. 87 C 9188 (N.D. Ill., Eastern Division); related arbitration styled
  South African Inventions Development Corp. (SAIDCOR) and Blackhawk Molding Co., Inc.,
  Case No. 51-T199-0075-88T (American Arbitration Association)
  (Actions for patent infringement, breach of contract)
• American Hoist & Derrick Company v. The Manitowoc Company,
  Civil Action No. 86 C 09383 (N.D. Ill., Eastern Division)
  (Action for patent infringement)
• Willi Moeller v. Ionetics, Inc.,
  Appeal No. 85-2646 (Fed. Cir.) (Opinion of the Court dated June 4, 1986)
  (Appeal of action for patent infringement)
• Noss Company v. Hydrocyclone Technology, Inc., and Ivan T. Koltai,
  Civil Action No. C 84-974-A (N.D. Ga., Atlanta Division)
  (Action for patent infringement, breach of contract, misappropriation, unfair competition)
• George L. Karapinka v. Union Carbide Corporation,
  Civil Action No. 83-CV-1682 (N.D. N.Y); George L. Karapinka v. Union Carbide Corporation, Docket No. 84-7916 (2d Cir.); George L. Karapinka v. Union Carbide Corporation,
  No. 84-1482 (on petition for certiorari by Petitioner Karapinka
  to the Supreme Court of the United States) (Action for ownership of intellectual property,
  breach of contract)
• Kimberly-Clark Corporation v. ICD Industries, Inc.,
  Civil Action No. 82-1987 (E.D. Penn.) (Action for patent infringement)
• Kimberly-Clark Corporation v. Johnson & Johnson and Personal Products Company,
  Civil Action No. 81-C-5262 (N.D. Ill., Eastern Division); Kimberly-Clark Corporation v. Johnson & Johnson and Personal Products Company, Docket No. 85-1066 (Fed. Cir.)
  (Action for patent infringement)

Recent Community Support

• Board of Governors,2007 - present
  The Smart Museum
  Chicago, Illinois
• Neighborhood Writing Alliance, Secretary and Board Member, 2000-2007
  The NWA sponsors writing workshops and publishes The Journal of Ordinary Thought
• Member of the Visiting Committee to the Department of Art History, 2009-present
  The University of Chicago
• Member of the Visiting Committee on the Visual Arts, 2000-2009
  The University of Chicago
• Asian Arts Council, 2005 - present
  Member, Acquisition Committee, 2007-2008
  The Art Institute of Chicago
• Literature and Arts Committee, 2005 - present
  Chair, Art Acquisition Subcommittee, 2007 - present
  University Club of Chicago

Bar Admissions and Registrations

• Illinois, 1981
• Registered to practice before the U.S. Patent and Trademark Office

Courts

• U.S. Supreme Court
• Illinois Supreme Court
• U.S. District Court for the Northern District of Illinois (Member, Trial Bar)
• U.S. Court of Appeals for the Federal Circuit
• U.S. Court of Appeals for the Sixth Circuit
• U.S. Court of Appeals for the Seventh Circuit
• U.S. District Court for the District of Arizona

Languages

• French