Jeffrey J. Catalano is a Partner in the Litigation Practice Group and Co-Leader of the Intellectual Property Litigation Practice Group.

Jeff focuses his practice on intellectual property litigation as well as IP-adjacent commercial litigation. His experience includes patent, copyright, trade secret, trademark, and unfair competition disputes before federal courts, arbitrators, the United States Patent and Trademark Office, and the International Trade Commission. Jeff has in-depth experience related to patent licensing, including the licensing of standards-essential patents on fair, reasonable and non-discriminatory (FRAND) terms. His FRAND-related experience includes patent valuation, assessments of licensing terms for individual patents as well as patent portfolios, and litigation and alternative dispute resolution, including related affirmative defenses and rate setting proceedings.

Clients trust Jeff with contentious, high-stakes litigation and licensing matters that often have tens, if not hundreds of millions of dollars on the line. He has both the trial experience and the negotiation skills demanded by these cases. Jeff is adept at seeing the bigger picture beyond an individual dispute and recommending the optimal course of action that will best serve his client's business. Jeff engages with his clients as a true partner, making their goals and concerns his own, fighting to achieve the optimal results.

Prior to joining Freeborn, Jeff was a Shareholder at Brinks, Gilson & Lione.

REPRESENTATIVE MATTERS:

  • Represented a telecommunications manufacturer before the S.D. Cal. in patent litigation related to use of voice recognition software by Android-based smartphones to search and retrieve electronic data.
  • Represented a telecommunications manufacturer before the D.N.J. in litigation related to the alleged use of copyrighted images as background wallpaper for smartphones.
  • Represented a telecommunications manufacturer before the International Trade Commission and in the D. Del. in investigations related to alleged infringement of patents alleged to be essential to the LTE, WCDMA, and 802.11 standards.
  • Represented a manufacturer of health and beauty products before the M.D. Fla. against allegations of infringement of copyrights in nearly 1,000 sound recordings.
  • Represented a telecommunications manufacturer before the S.D.N.Y. in litigation related to the alleged breach of a FRAND obligation by owner of a portfolio of standards essential patents.
  • Represented a medical device company in dispute relating to duration and enforceability of patent license agreement.
Speaking Engagements: 
  • Panelist, "Enforcing IP in the United States," USPTO China IP Roadshow, John Marshall Law School (October 20, 2017).
  • Litigant/Panelist, "China-US Intellectual Property Comparative Mock Trial," China’s State Intellectual Property Office (SIPO) (June 15, 2017).
  • Speaker, "Fundamentals of U.S. Patent Litigation," Changzhou Annual IP Seminar, Changzhou, China (June 9, 2017).
  • Panelist, "Demystifying Recent Decisions and Appeals at the ITC," CenterForce IP Summit (April 2016).
  • Speaker, "IP Protection for Product Designs," Association of Corporate Counsel, Chicago Chapter (August 2015).
  • Presenter, "The Shifting Economics of Patent Litigation," ABA Annual Meeting, Chicago, IL (July 31, 2015).
  • Presenter, "Utilizing the ITC in Your Enforcement Strategy," IP Strategy Summit Conference, Chicago, IL (May 12, 2015).
  • Panelist, "Protecting Trade Secrets and Defending Against Allegations of Corporate Theft," Association of Corporate Counsel, Mountain West Chapter, Winter Retreat (March 19, 2015).
  • Moderator, "What is the Future of RAND/FRAND Licensing?," ABA Annual Intellectual Property Law Conference, Arlington, VA (April 3, 2013).

Education

J.D., Georgetown University Law Center
B.A., Miami University

State Bar Admissions

Illinois

Federal Bar Admissions

  • Court of Appeals for the Federal Circuit
  • United States District Court for the Northern District of Illinois (Trial Bar)
  • United States District Court for the Eastern District of Texas
  • United States District Court for the Eastern District of Michigan
  • United States District Court for the Western District of Michigan