CONTACT INFORMATION

Chicago t 312.258.5786 f 312.258.5600 E-mail Download vCard

PRACTICE AREAS

BAR ADMISSIONS

  • Illinois
  • U.S. Court of Appeals for the Third Circuit
  • U.S. Court of Appeals for the Tenth Circuit
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Northern District of Illinois
  • U.S. Patent and Trademark Office

FOREIGN LANGUAGE ABILITIES

    German (Conversant)

Brett A. Valiquet

Of Counsel

Brett A. Valiquet has litigated both jury and non-jury patent, trademark and trade secret cases.

His litigated patent cases have included high-tech electronics, software and medical devices emphasizing issues involving claim interpretation and Markman hearings.

He has prepared and utilized patent reexaminations in both litigation and pre-litigation contexts.

As an experienced technology lawyer, Mr. Valiquet has managed large company patent portfolios including strategic planning, monetization and licensing for those portfolios; and has prepared and prosecuted more than 3000 patent applications covering business methods, software, data processing, complex electronic and mechanical systems and components. These include:

  • Semiconductor devices
  • Telecommunications, television and video systems
  • Image processing
  • Pre-press
  • Printing and engraving systems
  • Medical technology, including stents, embolism coils, catheters and ventilators
  • Medical imaging including MRI and CT scan systems
  • Industrial liquid control valves and valve systems
  • Steel company manufacturing, conveying and stamping die systems and products
  • Industrial conveyor systems
  • Motor and generator cores and systems for manufacture thereof
  • Office document storage products
  • Shipping accessories for rail cars
  • School bus monitoring systems

Mr. Valiquet has coordinated prosecution for foreign corresponding patent applications in a number of different countries and has close working relationships with correspondent foreign law firms, particularly in Munich, Germany.

He has also evaluated patent portfolios for corporate acquisition due diligence, has prepared clearance opinions in connection with right-to-use investigations, and has performed patentability investigations and rendered opinions in connection therewith.

He has also issued a number of opinions concerning patent validity and infringement.

Mr. Valiquet has represented both licensors and licensees in negotiating and litigating patent, trademark and know-how license agreements.

Experience

Samples of Mr. Valiquet's patent infringement litigation experience include (an asterisk indicates a party Mr. Valiquet represented):

  • Cook* v. Boston Scientific (D. Ind.) (Gianturco Z-stent)
  • Cook* v. Meadox (D. Ind.) (Gianturco Z-stent)
  • Cook* v. Bard (D. Ind.) (Gianturco Z-stent)
  • Cook* v. Boston Scientific (D. Ind.) (embolism coils)
  • Cook* v. Boston Scientific (D. Ind.) (abdominal aortic aneurism stents)
  • Oce North America, Inc./Oce Printing Systems* v. Nashua Corporation (N.D. Ill.) (high speed printer toner container)
  • American Building Control v. Robotics Technologies, Inc.* (N.D. Tex.) (school bus video monitoring)
  • AccusScan v. Linotype-Hell/Heidelberg* (E.D.N.Y.) (image balancing circuit for scanner)
  • Read v. Portec* (D. Del.; Fed. Cir.) (material screening equipment)
  • Brennan* v. Mr. Hangar (D.N.Y.) (garment hangar bar)
  • Brennan* v. Garment Bar (D.N.Y.) (garment hangar bar)
  • Hell* v. Scitex (D.N.Y.) (pre-press printing software - rotogravure)
  • Siemens-Elema* v. Puritan-Bennet (D.N.Y.) (ventilator)

Speeches and Presentations

"Markman Claim Interpretation Strategies," Licensing Executive Society (July 2004)

Previous Experience

Mr. Valiquet joined Schiff Hardin as a partner in August 2000 after 28 years with Hill, Steadman & Simpson, where he had been a partner since 1976.

Prior to his law firm practice, Mr. Valiquet worked for Motorola.

Awards and Honors

Leading Lawyer – Intellectual Property, Illinois Leading Lawyers Network
Martindale-Hubbell — A/V Rated

Education

Chicago-Kent College of Law(J.D., 1974)
Illinois Institute of Technology(B.S.E.E., 1970)

Professional Memberships

Intellectual Property Law Association of Chicago
Licensing Executives Society