Jeffrey J. Catalano

Partner

[email protected]

Phone: (312) 360-6832

Fax: (312) 360-6520

I pride myself in seeing the bigger picture beyond and individual dispute, which enables me to recommend the optimal course of action to best serve my client’s business. I engage with my clients as a true partner, making their goals and concerns my own, and then fight to achieve them.

About

About

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 also 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. Although he represents clients of varying size, national origin, and litigation experience, Jeff has made a practice of assisting domestic and foreign clients with their first significant U.S. litigations.  Jeff’s candor, communication style, and understanding of business realities allow him to help clients traverse the pitfalls and mitigate the burden of U.S. discovery.  At trial, Jeff is adept at presenting complicated concepts, principles, and technologies in an understandable, memorable, and relatable fashion.

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

Representative Matters

Representative Matters

  • Represents a telecommunications manufacturer in patent litigation related to multiband antenna technology.  Jeff was instrumental in prevailing on a motion to dismiss for improper venue, resulting in the transfer of the case away from the Eastern District of Texas.  The case is currently pending in the Northern District of Texas.

  • Represents a real-estate investment firm before the Northern District of Illinois in trademark litigation related to the ownership and use of a trademark associated with a historic building.  The case is currently pending.

  • Represented a large residential services company before the M.D. Tenn. in copyright related to the unauthorized use of the client’s customer-service manuals in training classes offered by the defendants.  After a six-day jury trial in which Jeff was lead trial counsel, the jury found that defendants had willfully infringed client’s copyright and denied all counterclaims and affirmative defenses.

  • 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.  Following a court-mandated mediation, the patent owner withdrew its claims of infringement against client.

  • Represented a telecommunications manufacturer in four investigations at the International Trade Commission in Section 337 litigation related to alleged infringement of patents related to LTE standards, WCDMA standards, 802.11 standards (“WiFi”), microprocessor technology, and graphical user interfaces.  In each investigation, the Commission found that the client did not violate Section 337 of the Tarriff Act of 1930.

  • Represented a telecommunications manufacturer before the D.N.J. in copyright litigation related to the alleged use of copyrighted images as background wallpaper for smartphones. The case settled on favorable terms.

  • Represented a manufacturer of health and beauty products before the M.D. Fla. in copyright litigation related to alleged use of nearly 1,000 sound recordings in online and social media advertising.  The case settled on favorable terms.

  • Represented a telecommunications manufacturer before the S.D.N.Y. in commercial litigation related to the alleged breach of a FRAND obligation by owner of a portfolio of standards essential patents. The case settled on favorable terms.

  • Represented a manufacturer of health and beauty products before the D.Utah in case related to the false advertising of health claims and misappropriation of trade secrets by the defendant, a competing manufacturer of health products.  The case settled on favorable terms.

  • Represented a manufacturer of health and beauty products before the W.D.Mo. against claims of monopolization and attempted monopolization under Section 2 of the Sherman Act.  Client prevailed on summary judgment.

Honors & Awards

Honors & Awards

  • Illinois Leading Lawyers - 2019 (cited in multiple years)

Professional Activities

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).

Perspectives

Media