Jeffrey G. Mote

Jeff is an intellectual property attorney and litigator with a wide-ranging intellectual property litigation and counseling practice focusing on the protection, enforcement, and defense of intellectual property rights. He has litigated patent, copyright, trademark, unfair competition, and trade secret cases throughout the United States and before the U.S. Patent and Trademark Office for a broad range of clients. In addition, Jeff also represents clients in intellectual property transactions, including those involving mergers and acquisitions, licensing, and intellectual property portfolio management. He clerked for the Honorable Harlington Wood, Jr. of the U.S. Court of Appeals for the Seventh Circuit and has extensive federal appellate experience.

Jeff’s patent litigation experience involves a broad array of technologies and industries. He has worked on matters related to plastic injection molding methods and machinery, consumer electronics, digital video and audio signal processing, data encryption, programmable CNC (Computer Numerical Control) machinery, navigational avionics and control systems, mechanical devices, wireless communication systems, eCommerce business methods, medical devices, and software used by network servers and for web page generation.

Jeff also has a far-reaching trademark infringement and anti-counterfeiting practice, including representing several major multinational brand owners from various industries, including golf equipment, tobacco, food and beverage, luxury goods, consumer products, financial services, and footwear/apparel. His anti-counterfeiting experience includes coordinating counterfeiting investigations with local and federal law enforcement offices and obtaining expedited relief for his clients, such as temporary restraining orders, ex parte seizures, and preliminary injunctions. Jeff has extensive eDiscovery experience and frequently counsels clients on implementing litigation holds, complying with ESI discovery obligations, and creating document retention policies.

Jeff works with consumer products, gaming, software and entertainment companies to protect and enhance their key brands and corporate images through strategic management of their worldwide trademark and copyright portfolios. He works to increase the visibility and value of their names and images, through trademark, copyright, and domain name registration, and Internet monitoring and enforcement. He also represents and advises some of the world’s largest brand owners regarding their advertising and promotional campaigns and has prepared high-value sponsorship agreements, including those involving celebrities, and professional sports teams and athletes.

In addition, Jeff manages, oversees, and polices the IP portfolios for several large, middle market, and startup entities. He has broad experience negotiating and preparing intellectual property and technology license agreements, non-disclosure agreements, and employee non-compete covenants. Jeff advises clients concerning the acquisition and sale of intellectual property rights. He conducts intellectual property audits and due diligence investigations and advises clients on intellectual property issues involved in mergers and acquisitions, technology transfers, and other business transactions.

Practical and business-oriented, Jeff advises companies of all types and sizes, including those with small legal departments, on how to appropriately and cost-effectively manage legal risk while still pursuing their business objectives.

Litigation

• Represented a Fortune 50 leader in the manufacture of consumer electronics in the defense of a patent infringement suit by a patent troll relating to television blocking technology, resulting in summary judgment of non-infringement.
• Defended one of the largest online investment companies in defense of a patent infringement suit relating to web server technology, resulting in a favorable settlement after positive claims construction ruling.
• Defended one of the world’s leading suppliers of telephones and answering machines in defense of a patent infringement suit, resulting in a favorable settlement without trial after obtaining summary judgment of invalidity (indefiniteness) of several asserted claims of the patents-in-suit.
• Represented a major tobacco company in numerous counterfeit investigations in the Chicago area, resulting in the filing of more than 40 civil suits in the Northern District of Illinois involving the illegal importation and distribution of counterfeit Newport® cigarettes. Coordinated and conducted numerous ex parte seizures with the U.S. Marshals Service, including the seizure of more than $2.5 million in counterfeit cigarettes from a Chicago-area warehouse.
• Obtained a temporary restraining order for one of the largest golf equipment manufacturers in the world against a wholesale distributor that was selling counterfeit Titleist® golf balls.
• Obtained a temporary restraining order and then permanent injunction for a leading retailer in a trade dress and copyright infringement action against a major retail competitor distributing “knock-offs” of Sears’ Craftsman® Laser Trac® laser levels.
• Defended a major sports-flooring manufacturer in an arbitration matter involving breach of contract claims relating to a complex asset purchase agreement and associated patent and trademark licenses, resulting in the dismissal of all claims against the client by the arbitrator.
• Prepared an appeal on behalf of a recreational goods manufacturer resulting in the federal circuit’s clarification of several novel claim interpretation issues.
• Defended a Fortune 50 aviation and defense industry company in a patent infringement suit involving automated CNC machine control technology by a “patent troll” firm, resulting in client dismissal for nominal settlement.
• Defended a major multi-channel industrial product distributor in a software patent infringement suit, resulting in the plaintiff’s voluntary dismissal at no cost to the client.
• Represent a major electronics manufacturer in policing and enforcing its patent and trademark portfolio, including the enforcement of numerous patents involving remote-control technology.
• Defended a world-famous entertainment and theme park company in trademark and copyright infringement action, resulting in summary judgment in favor of the client on all of the plaintiff’s claims, as well as the client’s counterclaims.

Transactional

• Prepared a wide variety of IP-related agreements, including licenses, assignments, non-disclosure agreements, employer invention ownership agreements, employee non-compete covenants, product endorsement agreements, and distribution agreements.
• Conducted IP due diligence investigations and audits for private equity clients in connection with the purchase of several Internet retailers.
• Managed the intellectual property portfolios for a diverse group of companies, ranging from a water park resort developer to a plastic container manufacturer.

• “Intellectual Property Rights in Creative Works and Inventions Created with the Assistance of AI,” Crain’s Chicago Business, October 9, 2023 (co-author with Jaimin Shah)