Stephen M. Hankins is the leader of Schiff Hardin’s Intellectual Property Group. He is a trial attorney concentrating in patent disputes and other complex commercial litigation. He has been a member of Schiff Hardin’s Executive Committee since 2008.

Mr. Hankins is increasingly asked by clients to substitute for other counsel, often on the eve of trial. He has first-chaired teams in venues throughout the country and argued cases before a number of state and federal courts, including the Court of Appeals for the Federal Circuit. Mr. Hankins also provides counseling to clients on worldwide intellectual property enforcement strategies and portfolio protection. He serves as outside general litigation counsel to several companies in California in general litigation and counseling matters.

Experience

Mr. Hankins's representative patent litigation engagements include:

• TouchTunes Music Corp. v. Rowe International Corp., USDC S.D.N.Y., Case No. 07-cv-11450-RWS – Representing patentee Arachnid – Electronic advertising systems on computer jukebox networks
• Ergotron, Inc. v. Rubbermaid Commerical Products, LLC, USDC Dist. of Minn., Case No. 0:10-cv-02010-ADM-JJG – Representing Rubbermaid Medical Solutions – Computer devices for hospitals
• Pall Corporation v. Cuno Incorporated/3M Purification Inc., USDC E.D.N.Y., Case No. 2:03-cv-00092-RRM-ETB – Representing 3M – Industrial water filtration systems
• Dwayne Glowner v. Muller Martini Mailroom Systems, Inc., USDC M.D.Fla., Case No. 8:09-cv-01768-EAK-TGW – Represented Muller Martini – High-speed inserting systems for newspaper publishing
• Pentair Technical Products, Inc. v. Card Locks Unlimited Inc., et al., USDC S.D.Cal., Case No. 12-cv-0883-DMS-BGS – Represented patentee and trade secret plaintiff Pentair – Devices for securing circuitry boards used in aviation and heavy industry
• Biotex, Inc. v. Heidelberg Engineering, Inc., USDC S.D.Tex., Case No. 3:11-cv-00309 – Represented Heidelberg – Glaucoma detection systems
• Rubbermaid Commercial Products LLC v. Waterbury Companies, Inc., USDC W.D.Vir., Case No. 5:10-cv-00012-SGW-JGW – Represented patentee Rubbermaid – Air freshener technology
• Caliper Life Sciences, Inc. v. Carestream Health, Inc., USDC N.D.Cal., Case No. 4:10-cv-02079-PJH – Represented Carestream Health – Genetic tagging methods used in cancer research
• Carestream Health, Inc. v. Caliper Life Sciences, Inc., USDC W.D.Wis., Case No. 10-cv-00381-WMC-SLC – Represented patentee Carestream Health – Multi-modal medical imaging systems with cross-registration capabilities
• Sunovion Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc., USDC District of N.J., Case No. 2:09-cv-01302-DMC-MF – Represented Lupin Pharmaceuticals – Hatch-Waxman claims arising from s-zopiclone/Lunesta products
• DR Systems, Inc. v. Eastman Kodak Company, USDC S.D.Cal., Case No. 3:08-cv-0069-H-BLM – Represented patentee Kodak – Digital image capture and display systems
• AntiCancer, Inc. v. Carestream Health, Inc., USDC S.D.Cal., Case No. 07-cv-1004-JLS-AJB – Represented Carestream Health – Medical imaging and fluorescent molecular tagging methods used in cancer treatment and research
• International Printer Corp. v. Brother International Corp., et al., USDC E.D.Tex, Case No. 2:07-cv-00361-TJW – Represented Kodak – systems and methods used in printing and accounting networks
• DR Systems v. Fujifilm Medical Systems USA, Inc., et al., USDC S.D.Cal. Case No. 3:06-cv-00417-JLS-NLS – Represented Kodak – Medical imaging capture, organization and display systems
• Scott C. Harris, et al. v. Classified Ventures, LLC, et al., USDC N.D.Ill., Case No. 06-cv-7055 – Represented Kodak – E-commerce graphics technology
• Board of Regents of the University of Texas System, et al. v. Eastman Kodak Company, et al., USDC W.D.Tex., Case No. SA-04-cv-00912-XR – Represented Kodak – Digital imaging capture and display systems for dental practices

Other engagements include:

• Charlotte Hohnstein v. Owens-Brockway Glass Container, Inc., Cal. Sup. Ct., Los Angeles County, Case No. VC060579 – Wrongful discharge, age and gender discrimination claims
• Owens-Brockway Glass Container Inc. v. Ian Anthony Silva and Enrique Ayala, Cal. Sup. Ct., Alameda County, Case No. RG12624277 – Theft and fraud
• Sondra Hendrix v. Owens-Brockway Glass Container Inc., USDC E.D.Cal., Case No. 2:12-cv-00668-JAM-GGH – Wrongful discharge, sexual harassment and discrimination
• Cal OSHA v. Owens-Brockway Glass Container, Inc., OSHA Appeals Board, Doc. No. 09-R1D4-2021-2022 – Citations concerning manufacturing machines
• Clarke and Rebecca Wixon, et al. v. Wyndham Resort Development Corp., et al., USDC N.D.Cal., Case No. 3:07-cv-02361-JSW – Class action, time share subscriptions
• Kapiolani K. Marignoli, et al. v. Dennis L. Duban, et al., Cal. Sup. Ct., Los Angeles County, Case No. BC425122 – Represented plaintiff – Fraud claims related to insurance policies and estate planning advice
• Eskanos & Adler, APC v. First Select Corp., et al., American Arbitration Association, No. 74 194 Y 00585 06 SHST – Represented Washington Mutual Bank – Unfair business practice, fraud and conversion claims brought by credit/collection agencies
• Denevi Camera & Video, Inc., et al. v. Qualex, Inc., et al., Cal. Sup. Ct., Alameda County, Case No. RG03133611 – Fraud, unfair competition claims related to film processing services
• Paul D. S. Good v. Eastman Kodak Company, Cal. Sup. Ct., Los Angeles County, Case No. BC 285689 – Whistleblower, antitrust claims relating to film pricing practices
• PriceWestern v. Eastman Kodak Company, USDC C.D.Cal., Case No. EDCV 00-00378 VAP (ANx) – Copyright claims related to code used for virtual real estate tours
• Maya Raber v. Kodak Imaging Network, et al., Cal. Sup. Ct., Alameda County, Case No. RG06262058 – Wrongful discharge, unfair business practices, relating to image compression algorithms
• Eastman Kodak Company v. CalComp Technology, Inc., et al., Cal. Sup. Ct., Orange County – Fraud, failed joint development project involving inkjet technology
• ABC Software Co. v. Foreign Government – Advised foreign national in copyright dispute related to software installation and sale of government-sponsored computer systems sold throughout country

Publications

Mr. Hankins has published articles on non-competition clause and developments in patent law, including the following:

"Patent Reform Act at a Glance," (co-author) The Recorder (October 3, 2011)

"Patent Reform 2011: The Most Significant Change in Patent Law in 50 Years," (co-author) Schiff Hardin LLP Intellectual Property Group Update (Sept. 29, 2011)

"House Passes the America Invents Act of 2011 – Headed for Reconciliation," (co-author) Schiff Hardin LLP Intellectual Property Group Update (July 7, 2011)

Speeches and Presentations

Mr. Hankins is a regular presenter/faculty member on intellectual property and departing employee/trade secret issues. Recent presentations include:

"The Evolution of Damages is About to Begin," Pressure to Monetize: Are We All Becoming Patent Trolls? IP Counsel Café, Palo Alto, Calif. (April 25, 2013)

"Patent Litigation 101 – Strategies Every In-House Lawyer Must Know," From Trouble to Trial to Triumph, The Network of Trial Law Firms, San Diego, Calif. (November 2012)

"Examining the Potential Ramifications of Patent Reform on Hatch-Waxman Litigation and the Brand/Generic Wars," Patent Reform for Life Sciences Companies, New York, NY (February 2012)

"Damage Calculations," Seventh Annual Intellectual (IP) Counsel Forum, ALM Events, San Jose, Calif. (March 2011)

"Throwing Down the Gauntlet: The Paragraph IV Notice Letter – Delivery and Receipt," Paragraph IV Disputes West, San Francisco, Calif. (December 2010)

"Discovery Strategies and Pre-Trial Maneuvering Tactics for Brand Names and Generics," Fourth Annual Paragraph IV Disputes: Expert Insights on Hatch-Waxman Litigation Strategies for Brand Names and Generics, New York, NY (April 2010)

"The Future of the Practice of IP In-House," Sixth Annual IP Counsel Forum, San Jose, Calif. (March 2010)

Pro Bono Activities

Mr. Hankins has worked pro bono on civil rights matters for the American Civil Liberties Union (ACLU), the Lawyers' Committee for Civil Rights of the San Francisco Bay Area, and the Earth Island Institute.

Previous Experience

Before joining Schiff Hardin, Mr. Hankins was a partner at Morgenstein & Jubelirer LLP, where he was Managing Partner from 2000 to 2004. He was an attorney with Heller Ehrman in San Francisco from 1991 to 1994.

Awards and Honors

AV Rated — Martindale-Hubbell

IP Star – Managing Intellectual Property Magazine