Jeff Nichols
Partner
Overview
Jeff Nichols is a trusted advisor, problem solver, and accomplished litigator. He achieves outstanding results for clients in important, high-stakes litigation.
Career & Education
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- Truman State University, B.S., chemistry, 1997
- University of Connecticut School of Law, J.D., with honors, 2000
- U.S. Patent and Trademark Office (USPTO)
- Supreme Court of the United States
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the Ninth Circuit
- U.S. Court of Appeals for the Seventh Circuit
- U.S. District Court for the Northern District of Illinois, Trial Bar
- U.S. District Court for the Eastern District of Wisconsin
- U.S. District Court for the Eastern District of Michigan
- U.S. District Court for the Southern District of Indiana
- U.S. District Court for the Northern District of Florida
- Supreme Court of Illinois
Professional Activities and Memberships
- Intellectual Property Owners Association
- Intellectual Property Law Association of Chicago
- PTAB Bar Association
- Lawyers for the Creative Arts
Jeff's Insights
Client Alert | 2 min read | 03.14.23
Federal Circuit Allows Apple’s Fintiv Challenge To Proceed
Although the Patent Trial & Appeal Board’s (PTAB) reliance on Fintiv to deny petitions for Inter Partes Review (IPR) has waned since Kathi Vidal was named Director of the USPTO and the advent of Sotera stipulations, these so-called Fintiv denials remain the subject of intense scrutiny by the patent bar. On March 13, 2023, the Federal Circuit Court of Appeals revived a challenge to the PTAB’s practice of discretionary denials under Fintiv, allowing it to proceed before the district court.[1] This revival will no doubt be welcomed by patent challengers who dislike the PTAB’s current practice under Fintiv.
Client Alert | 3 min read | 01.25.23
Client Alert | less than 1 min read | 03.02.21
Client Alert | less than 1 min read | 03.20.20
Representative Matters
- Cook Group Incorporated and Cook Medical LLC v. Boston Scientific Scimed Inc. (PTAB 2016-2021). Represented the Cook entities in a series of IPR proceedings challenging four of Boston Scientific's patents relating to hemostatic clips used to treat internal bleeding in the gastrointestinal tract. The net result at the conclusion of the proceedings, including appeals to the Federal Circuit Court of Appeals, was in the Cook entities’ favor. The asserted claims from three of the four patents were held unpatentable, leaving only a handful of claims from the fourth patent to litigate going forward.
- Boston Scientific Corp. and Boston Scientific Scimed Inc. v. Cook Group Incorporated and Cook Medical LLC (D. Del. 2015-2017; S.D. Ind. 2017 to present). Defending the Cook entities in a patent infringement action filed by Boston Scientific concerning hemostatic clips used to treat internal bleeding in the gastrointestinal tract. The case is ongoing.
- Deere & Co. v. Gramm (PTAB 2015-2021). Represented Deere in two IPR proceedings challenging Gramm's patent relating to agricultural equipment. The net result at the conclusion of the proceedings, including several appeals to the Federal Circuit Court of Appeals, was in Deere’s favor. Most of the asserted claims from the patent were held unpatentable, leaving only a handful of claims to litigate going forward.
- Gramm and Headsight, Inc. v. Deere & Co.(N.D. Ind. 2014-present). Defending Deere in a patent infringement action filed by Gramm and Headsight concerning agricultural equipment. The case is ongoing.
- In the Matter of Certain Balanced Armature Devices, Products Containing Same, and Components Thereof (ITC 2020). Defended Shenzen Bellsing Acoustic Technology, Ltd. and other respondents in an investigation at the International Trade Commission (ITC) instituted by Knowles Electronics, LLC and other complainants regarding balanced armature devices used in headphones, hearing aids, and the like.
- Endotach LLC v. Cook Medical Inc.(S.D. Ind. 2013-2018). Defended Cook Medical in a patent infringement action filed by Endotach involving two patents relating to endovascular stent-grafts for treating aneurysms. The district court granted summary judgment in Cook Medical's favor on noninfringement grounds regarding one patent and invalidity grounds regarding the other patent. After several appeals to the Federal Circuit Court of Appeals, the judgment was affirmed in Cook Medical’s favor.
- Boston Scientific Corp., Boston Scientific Scimed, Inc., Boston Scientific Ltd., and Endovascular Technologies, Inc. v. Cook, Inc., Wilson-Cook Medical, Inc., Cook Medical Inc., Cook Ireland Ltd., Cook Group, Inc., Taewoong Medical Co., Ltd., Standard Sci-Tech Inc., EndoChoice, Inc., and Sewoon Medical Co., Ltd.(D. Mass. 2010-2017). Defended the Cook entities in a patent infringement action filed by Boston Scientific and others concerning esophageal stents for treating blockages, such as cancer, in the esophagus. The case settled on terms favorable to the Cook entities.
- AutoForm Engineering, GmbH v. Engineering Technology Associates, Inc.(E.D. Mich. 2010-2014). Represented AutoForm Engineering in a patent infringement action against Engineering Technology Associates concerning software used for sheet-metal forming in the auto industry. The case settled on terms favorable to AutoForm Engineering.
- AstraZeneca Pharmaceuticals LP, IPR Pharmaceuticals, Inc., AstraZeneca AB, and The Brigham and Women's Hospital, Inc. v. Teva Pharmaceuticals USA, Inc.(D. Del. 2010-2012). Defended Teva Pharmaceuticals USA in a second Hatch-Waxman action concerning the cholesterol-lowering drug, Crestor®, and its active ingredient, rosuvastatin calcium. The district court granted Teva's motion to dismiss the action. On appeal, the Federal Circuit Court of Appeals affirmed the dismissal.
- Millennium Pharmaceuticals, Inc. and Schering Corp. v. Teva Parenteral Medicines, Inc., Teva Pharmaceuticals USA, Inc., and Teva Pharmaceutical Industries Ltd.(D. Del. 2009-2011). Defended Teva Parenteral Medicines, Teva Pharmaceuticals USA, and Teva Pharmaceutical Industries in a Hatch-Waxman action concerning the anti-coagulant drug, Integrilin®, and its active ingredient, eptifibatide. The case settled on terms favorable to the Teva entities.
- AstraZeneca Pharmaceuticals LP, AstraZeneca UK Limited, IPR Pharmaceuticals Inc., and Shionogi Seiyaku Kabushiki Kaisha v. Teva Pharmaceuticals USA, Inc.(D. Del. 2008-2013). Defended Teva Pharmaceuticals USA in a Hatch-Waxman action concerning the cholesterol-lowering drug, Crestor®, and its active ingredient, rosuvastatin calcium.
- Foboha GmbH and Foboha US, Inc. v. Gram Technology, Inc. and Jes Gram(N.D. Ill. 2008-2009). Represented Foboha GmbH and Foboha US in an unfair competition action against Gram Technology and Jes Gram concerning injection molds. The case settled on terms favorable to Foboha GmbH and Foboha US.
- ArrivalStar S.A. and Melvino Technologies Ltd. v. Continental Automotive Systems US, Inc., et al.(N.D. Ill. 2008-2009). Defended Continental Automotive Systems in a patent infringement action filed by ArrivalStar and Melvino Technologies concerning an internet-based system for transportation management. The case settled on terms favorable to Continental Automotive Systems.
- Trumpf Laser GmbH + Co. KG v. Amglo Kemlite Laboratories, Inc. (N.D. Ill. 2008). Defended Amglo Kemlite Laboratories in a patent infringement action filed by Trumpf Laser concerning laser pumping lamps. The case settled on terms favorable to Amglo Kemlite Laboratories.
- Malessa Partners, L.L.C. v. Express Scripts, Inc. and PrintGraphics Inc.(N.D. Ill. 2007). Defended Express Scripts and PrintGraphics in a patent infringement action filed by Malessa Partners concerning integrated forms. The case settled on terms favorable to Express Scripts and PrintGraphics.
- Cook Incorporated v. Medtronic, Inc. and Medtronic Vascular, Inc.(N.D. California 2006-2008). Represented Cook in an action for declaratory relief concerning a patent license agreement between Cook, Medtronic, and Medtronic Vascular. The case was appealed to the Ninth Circuit Court of Appeals. Following appeal, the case settled on terms favorable to Cook.
- Edwards Lifesciences, LLC and EndoGAD Pty, Ltd. v. Cook Incorporated, Medtronic, Inc., Medtronic AVE, Inc., and W.L. Gore & Associates, Inc.(N.D. California 2003-2010). Defended Cook in a patent infringement action filed by Edwards Lifesciences and EndoGAD concerning endovascular stent-grafts for treating aneurysms. Cook won a summary judgment of noninfringement and the district court entered judgment in Cook's favor. The Federal Circuit Court of Appeals affirmed the decision.
- Hi-Tech Beds Systems, Corp. and Michelle Connell v. KLN Steel Products Company, Ltd. and Clark/Blinderman/Knight, LLC(N.D. Illinois 2004-2006). Defended KLN Steel Products Co. and Clark/Blinderman/Knight in a patent infringement and trade secret action filed by Hi-Tech Beds Systems and Ms. Connell concerning military bunk-beds. The case was dismissed-in-part on summary judgment.
- Halkey-Roberts Corp. v. Filtertek, Inc.(M.D. Florida 2004-2005). Represented Filtertek in a declaratory judgment action filed by Halkey-Roberts concerning Filtertek's patents for medical valves. The case settled on terms favorable to Filtertek.
- Dionex Corp. v. Alltech Associates, Inc.(N.D. California 2003-2005). Defended Alltech Associates in a patent infringement action filed by Dionex concerning chemical chromatography systems. The case settled on terms favorable to Alltech Associates following the court's claim construction ruling.
- A.L. Hansen Manufacturing Co. v. Bauer Products, Inc.(N.D. Illinois 2003-2004). Represented A.L. Hansen Manufacturing in a patent infringement action against Bauer Products concerning automobile support arms. The case settled on terms favorable to A.L. Hansen.
- MTD Products, Inc. v. Frederick Manufacturing Corp.(N.D. Ohio 2003-2004). Mr. Nichols defended Frederick Manufacturing in a patent infringement action filed by MTD Products concerning lawn mower blades. The case settled on terms favorable to Frederick.
- Zila, Inc. and Zila Swab Technologies, Inc. v. Beutlich Pharmaceuticals, L.P. and Beutlich, L.P.(N.D. Illinois 2003). Represented Zila and Zila Swab Technologies in a patent infringement action against Beutlich Pharmaceuticals and Beutlich concerning medicinal swab applicators. The case settled on terms favorable to Zila and Zila Swab.
- Viridian Packaging Solutions, LLC v. Zila, Inc. and Zila Swab Technologies, Inc.(N.D. Illinois 2003). Represented Zila and Zila Swab Technologies in a declaratory judgment action filed by Viridian Packaging Solutions concerning Zila's patents for medicinal swab applicators. The case settled on terms favorable to Zila and Zila Swab.
- Daimler-Chrysler Corp. and New Venture Gear, Inc. v. BorgWarner Inc. and BorgWarner TorqTransfer Systems Inc.(E.D. Michigan 2001-2003). Defended BorgWarner and BorgWarner TorqTransfer Systems in a patent infringement action filed by Daimler-Chrysler and New Venture Gear concerning 4WD automobile transfer cases. The case settled on terms favorable to BorgWarner and BorgWarner TorqTransfer Systems.
- BorgWarner Inc. and BorgWarner TorqTransfer Systems Inc. v. New Venture Gear, Inc.(N.D. Illinois 2000-2003). Represented BorgWarner and BorgWarner TorqTransfer Systems in a patent infringement action against New Venture Gear concerning 4WD automobile transfer cases. The case settled on terms favorable to BorgWarner and BorgWarner TorqTransfer Systems following the court's claim construction ruling.
- The Coca-Cola Company v. Liqui-Box Corp.(N.D. Georgia 2000-2001). Represented The Coca-Cola Company in a patent infringement action against Liqui-Box concerning collapsible syrup containers. Liqui-Box was permanently enjoined from making and selling the accused product after the patent was found valid and infringed.
- Manitowoc Foodservice Group, Inc. and Manitowoc Ice, Inc. v. Whirlpool Corp., IMI Cornelius, Inc., Scotsman Industries, Inc., Scotsman Group, Inc., Booth, Inc., Sub-zero Freezer Company, Inc., and Mile High Equipment Co.(E.D. Wisconsin 2000-2001). Represented Manitowoc Foodservice Group and Manitowoc Ice in a patent infringement action against various defendants concerning commercial ice machines. The case settled on terms favorable to Manitowoc Foodservice Group and Manitowoc Ice.
- Ffrench Emergency Pocket Airway, Inc. and Dr. Ronald French v. Cook Critical Care, Inc.(E.D. Louisiana 2000-2001). Defended Cook in a patent infringement action filed by Ffrench Emergency Pocket Airway and Dr. French concerning medical devices for emergency tracheotomies. The case settled on terms favorable to Cook.
- Prototype Equipment Co. v. Fallas Automation, Inc., et al.(N.D. Illinois 2000). Represented Prototype Equipment in a patent infringement action against Fallas Automation concerning large-scale packaging equipment. Prototype Equipment won a temporary restraining order and the case was settled on terms favorable to Prototype Equipment.
Jeff's Insights
Client Alert | 2 min read | 03.14.23
Federal Circuit Allows Apple’s Fintiv Challenge To Proceed
Although the Patent Trial & Appeal Board’s (PTAB) reliance on Fintiv to deny petitions for Inter Partes Review (IPR) has waned since Kathi Vidal was named Director of the USPTO and the advent of Sotera stipulations, these so-called Fintiv denials remain the subject of intense scrutiny by the patent bar. On March 13, 2023, the Federal Circuit Court of Appeals revived a challenge to the PTAB’s practice of discretionary denials under Fintiv, allowing it to proceed before the district court.[1] This revival will no doubt be welcomed by patent challengers who dislike the PTAB’s current practice under Fintiv.
Client Alert | 3 min read | 01.25.23
Client Alert | less than 1 min read | 03.02.21
Client Alert | less than 1 min read | 03.20.20
Insights
|
Jeff's Insights
Client Alert | 2 min read | 03.14.23
Federal Circuit Allows Apple’s Fintiv Challenge To Proceed
Although the Patent Trial & Appeal Board’s (PTAB) reliance on Fintiv to deny petitions for Inter Partes Review (IPR) has waned since Kathi Vidal was named Director of the USPTO and the advent of Sotera stipulations, these so-called Fintiv denials remain the subject of intense scrutiny by the patent bar. On March 13, 2023, the Federal Circuit Court of Appeals revived a challenge to the PTAB’s practice of discretionary denials under Fintiv, allowing it to proceed before the district court.[1] This revival will no doubt be welcomed by patent challengers who dislike the PTAB’s current practice under Fintiv.
Client Alert | 3 min read | 01.25.23
Client Alert | less than 1 min read | 03.02.21
Client Alert | less than 1 min read | 03.20.20
