Christopher A. Harkins

Associate

With over 20 years practicing law, Mr. Harkins has significant experience in patent litigation, opinions, and prosecution, as well as in copyright and trade secret litigation. Currently, he specializes on pharmaceutical, biochemical, and chemical litigation. In addition to practicing law, Mr. Harkins has authored eighteen publications, including six law review articles, six trade journal articles, and three book chapters on intellectual property. His works have been cited more than one hundred times in popular culture and legal periodicals, in the U.S. House of Representatives, in testimony before the U.S. Senate, and to the U.S. Supreme Court. And three of his law review articles have won writing awards given in association with the U.S. Library of Congress. Mr. Harkins has been quoted extensively in a front-page article of the New York Times and was later interviewed on Bloomberg Television’s Inside Track regarding the lawsuit against Warner Brothers for the movie Hangover II and its use of a facial tattoo created for Mike Tyson.

Articles and Publications

• PATENT LAW REVIEW, Part 1: Patentability/Validity, pp. 75-109 (Thomson Reuters 2009)
• “It’s All in the Wording,” World Intellectual Property Review, pp. 48-51 (2009)
• “Tips for Enriching a Patent Specification: It Could Mean the Difference Between Valid and Invalid Claims,” LEXISNEXIS EMERGING ISSUES ANALYSIS 1–16 (2009)
• PATENT CLAIMS: CONSTRUCTION AND DRAFTING, Chap. 2, pp. 30–64 (Univ. Press 2009)
• “Tesla, Marconi, and the Great Radio Controversy: Awarding Patent Damages Without Chilling a Defendant’s Incentive to Innovate,” 73 MISSOURI LAW REVIEW 745–816 (2008) (National Burton Award for Legal Writing) (cited to U.S. Supreme Court in Bilski v. Kappos, case no. 08-964, Amici Curiae Brief of Internet Retailers for Respondent)
• “Wishful Thinking, Shooting for the Moon, and Unproved Patents: A Call for Stricter Claim Construction,” 7 JOURNAL OF INTELLECTUAL PROPERTY RIGHTS 9–29 (Nov. 2008)
• “Throwing Judge Bryson’s Curveball: A Pro Patent View of Process Claims as Patent-Eligible Subject Matter,” 7 JOHN MARSHALL REVIEW OF INTELLECTUAL PROPERTY LAW 701–34 (2008) (Judged one of the best articles of 2008 on patent law according to Thomson Reuters)
• “Paper Patents and Patent Trolls,” in PATENT TROLLS: LEGAL IMPLICATIONS chap. 4, 82–122 (Univ. Press 2008)
• “Beware of What You Ask for: Broad Patent Claims Might Be Invalid as Indefinite or as Lacking Enablement,” 12 Pennsylvania Bar Ass’n Intellectual Prop. Law Section Newsletter 1–5 (Summer 2008)
• “Here Today, Gone To-Morrow: Lessons of How to Avoid Losing in Bankruptcy the Standing to Sue for Patent Infringement after Morrow v. Microsoft,” LexisNexis Expert Commentaries 1–9 (2008)
• “Fending Off Paper Patents and Patent Trolls: A Novel ‘Cold Fusion’ Defense Because Changing Times Demand It,” 17 ALBANY LAW JOURNAL OF SCIENCE & TECHNOLOGY 407–479 (2007) (National Burton Award for Legal Writing) (cited to the Senate Committee on the Judiciary on Patent Reform in the Courts and Congress)
• “A Budding Theory of Willful Patent Infringement: Orange Books, Colored Pills, and Greener Verdicts,” 2007 DUKE UNIVERSITY LAW & TECHNOLOGY REVIEW 1–39 (2007)
• “Choosing Between the Advice of Counsel Defense to Willful Patent Infringement or the Effective Assistance of Trial Counsel: A Bridge or the Troubled Waters?” 5 NORTHWESTERN UNIVERSITY JOURNAL OF TECHNOLOGY & INTELLECTUAL PROPERTY 210–247 (2007), cited in H.R. Rep. No. 110–314, at 28 nn.15 & 18 (Sept. 4, 2007) (The “Patent Reform Act of 2007”)
• “Tattoos and Copyright Infringement: Celebrities, Marketers, and Businesses Beware of the Ink,” 10 LEWIS & CLARK LAW REVIEW 313–332 (2006) (National Burton Award for Legal Writing) (Inside Track: Copyright Headache for “Hangover” (Bloomberg television broadcast May 27, 2011) (discussing copyright suit against Warner Brothers for HANGOVER 2) Interview with Noam Cohen, On Tyson’s Face, It’s Art. On Film, a Legal Issue, N.Y. TIMES, May 21, 2011, at A1 and A3 (same)
• “Overcoming the Extraterritorial Bar to Bringing Copyright Actions: On Pleading Copyright Infringement to Protect Copyrighted Works from the Defendant that Ships Overseas for Distribution Abroad,” 17 INTELLECTUAL PROPERTY & TECHNOLOGY LAW JOURNAL 1–9 (May 2005)
• “Implied Warranty Against Infringement U.C.C. § 2-312(3),” Contributor, 16 INTELLECTUAL PROPERTY & TECHNOLOGY LAW JOURNAL 7–11 (Aug. 2004)
• “An Anti-Subrogation Rule Is Extended,” co-author, NATIONAL LAW JOURNAL, January 17, 1994, pp 19–23
• “The Pinocchio Defense Witness Impeachment Exception to the Exclusionary Rule: Combating a Defendant’s Right to Use with Impunity the Perjurious Testimony of Defense Witnesses,” 1990 UNIVERSITY OF ILLINOIS LAW REVIEW 375–474 (1990)

Honors

• Inside Track: Copyright Headache for “Hangover” (Bloomberg television broadcast May 27, 2011) (discussing copyright suit against Warner Brothers for HANGOVER 2)
• Interview with Noam Cohen, On Tyson’s Face, It’s Art. On Film, a Legal Issue, N.Y. TIMES, May 21, 2011, at A1 and A3
• 2010 “Decade Award” by the Burton Awards for Legal Achievement for ’ 2007, 2008, and 2009 articles in Lewis & Clark Law Review, Albany Law Journal of Sci. & Tech., and Missouri Law Review
• 2009 citation in testimony before the Senate Committee on the Judiciary on Patent Reform in the Courts and Congress by Prof. Lemley of Stanford Law School
• 2007–2009 three time winner of the National Burton Award for Legal Writing, in association with the U.S. Library of Congress and the Law Library of Congress
• 2007 citation by the U.S. House of Representatives in support of the “Patent Reform Act of 2007”
• 2006–2010 Leading Intellectual Property Lawyer (recommended by peers in a statewide survey to be among the top intellectual property lawyers in Illinois), see 33 Chicago Lawyer 53 (July 2010), 31 Chicago Lawyer 64 (May 2008), 29 Chicago Lawyer 84 (Sept. 2006)
• 100+ citations in legal periodicals and popular culture

Representative Matters

Patents Litigation

• Encyclopaedia Britannica, Inc. v. Alpine Electronics of America, (computerized vehicle navigation systems) 
  ● Matter 1: Won a case of “first impression” based on statutory interpretation of 35 U.S.C. § 120 resulting in the invalidity of continuation patents; reported at 609 F.3d 1345 (Fed. Cir. 2010); see also electronic version of 643 F. Supp. 2d 874 (W.D. Tex. Aug. 3, 2009) (granting summary judgment) 
  ● Matter 2: Argued and won a case before the Federal Circuit that invalidated a pioneering patent; reported at 2009 WL 4458527 (Fed. Cir. Dec. 4, 2009)
• Levine v. Honda Motor Co., (electronic wireless navigation system) Represented supplier to alleged infringer; Case dismissed in favor of our client’s customer without any payments to the patent owner
• Zeevi v. Pioneer North America, Inc., (aftermarket vehicle navigation systems) Represented defendant in patent infringement suit; plaintiff settled during discovery
• Optivus Technology, Inc. v. Ion Beam Applications., (Proton beam therapy systems for treating cancer) Won a broad claim construction whereby three patents remained for jury trial after appeal; reported at 469 F.3d 978 (Fed. Cir. 2006)
• Tyco Electronics Corp. v. Hon Hai Precision Industry, (Computer electronics) Represented plaintiff in declaratory judgment; Defendant settled after plaintiff’s summary judgment motion of invalidity

Trade Secrets Litigation

• Facility Wizard Software, Inc. vs. Southeastern Technical Services, (Business software) Won motion to dismiss in case involving software; reported at 2009 WL 2059934 (N.D. Ill. July 9, 2009)
• Kim v. Dawn Food Products, Inc., (bakery mixes for bread) Won summary judgment of no misappropriation; reported at 2006 WL 695257 (N.D. Ill. Mar. 17, 2006)
• Systems Material Handling Co. v. Tyco Electronics Corp., (electrical connector components) Won a motion for a more definite statement, and plaintiff settled
• Rony v. Overture Services Inc., (source code to scrape data for Internet auction website) Represented the defendant and dot-com defendants

Copyrights and Business Torts Litigation

• Western Pennsylvania Conservancy v. Heinz, (Frank Lloyd Wright’s famous Fallingwater® home) Represented plaintiff and owner of copyright
• RDV Sports, Inc. v. Logo Connections, Inc., (professional hockey team) Represented professional hockey team in naming-rights case; Defendant settled after defeated its motion to dismiss
• McKinley Medical L.L.L.P. v. Zdeb, (Infusion devices to inject chemotherapy) reported at 200 F.R.D. 648 (D. Colo. 2001) Represented declaratory judgment Plaintiff asserting tortious interference, business torts, and breach of contract

Patent Preparation and Prosecution

• 8,002,814 titled, “Over the Endoscope Introducer for Stents”
• 7,717,923 titled, “Over the Endoscope Introducer for Stents”
• 7,641,638 titled, “Flexible Elongate Surgical Needle Device Having a Tissue Engaging Section Being of Greater Flexibility than an Intermediate Section, and Methods of Using the Device”
• 7,637,873 titled, “Wire Guides Having Novel Outer Surface Areas and Reservoirs for Enhancing Hydrophilic Properties and Delivering Therapeutic Agents”
• 7,608,056 titled, “Steerable Catheter Devices and Methods of Articulating Catheter Devices”
• 7,601,147 titled, “Catheter Connector Assemblies and Methods for Attaching a Catheter and Luer Assembly”
• 7,588,225 titled, “Portable Devices for Detachably Securing Cans and Other Objects”
• 7,566,300 titled, “Endoscopic Surgical Access Devices and Methods of Articulating an External Accessory Channel”
• 7,153,324 titled, “Prosthetic Valve Devices and Methods of Making Such Devices”
• 7,121,280 titled, “Medical Devices and Methods of Selectively and Alternately Isolating Bronchi or Lungs”
• 6,776,644 titled, “Lever Actuated ZIF Processor Socket”
• 6,635,121 titled, “Method and Apparatus for Controlling the Decarburization of Steel Components in a Furnace”
• 6,342,013 titled, “Apparatus and Method for a Child’s Suspended Merry-Go-Round”
• Canadian Pat. No. 2,092,741 titled, “In-Line Isolator”

Speaking Engagements and Presentations

• “Attorney Panel Workflow Discussion,” Wolters Kluwer Legal Markets Conference, Chicago, Illinois, April 12-14, 2010
• “Where is the Next Opportunity?,” IP Counsel Café, Palo Alto, California, April 1-2, 2009

Bar Admissions and Registrations

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

Courts

• U.S. District Court for the Northern District of Illinois (Member, Trial Bar)
• U.S. Court of Appeals for the Federal Circuit
• U.S. District Court for the Northern District of Illinois
• U.S. District Court for the Eastern District of New York
• U.S. District Court for the Southern District of New York

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