Photograph of William H. Frankel

Education

  • Tulane University, B.S. mechanical engineering (1977) cum laude
  • Tulane Law School, J.D. (1980) cum laude

Admissions

  • Illinois
  • U.S. Patent and Trademark Office (USPTO)
  • U.S. Supreme Court
  • U.S. District Court, Northern District of Illinois, Trial Bar
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, 7th Circuit

Professional Experience

  • DePaul University College of Law, Chicago, IL
    Adjunct Professor, Patent Law, 1993-1995

William H. Frankel

Partner
Chicago
wfrankel@crowell.com
Phone: +1 312.321.7736
455 N. Cityfront Plaza Drive
Suite 3600
Chicago, IL 60611

Bill Frankel is a co-chair of Crowell & Moring's Patent and ITC Litigation Group. Clients and colleagues alike recognize Bill for his extraordinary range of experience and his effective advocacy in intellectual property disputes. His litigation practice encompasses patent, trademark, copyright, trade secrets and unfair competition litigation; he also counsels clients on evaluating, protecting, procuring and transferring IP rights. Bill is known for helping clients navigate litigation with an eye toward achieving their business objectives, exploring strengths and weaknesses of all parties, and identifying cost-effective exit strategies and resolution opportunities. His maxim is, “I believe in continuous two-way communication with clients, remaining flexible and open to different ideas and approaches, and consciously trying to avoid unpleasant surprises.”

In over three decades of practice, Bill has earned a reputation for his uncompromising ethics and dedication to client needs. He has been honored as an Illinois Super Lawyer in Intellectual Property Litigation since 2005, has been named in Euromoney’s Guides to the World's Leading Patent and Trademark Law Experts, and has been recognized by Chambers USA, The Best Lawyers in America, and Who’s Who Legal, among other accolades. He is also a trained mediator, using his judgment and experience to help both clients and litigants resolve intellectual property disputes outside the courtroom.

Bill represents clients in leading cases in federal trial and appellate courts, the U.S. Patent and Trademark Office, the International Trade Commission and alternative dispute resolution fora. His engineering background and communication skills have helped him distill complex fact patterns into compelling arguments involving medical devices, packaging materials, consumer and kitchen electronics, navigation systems, telecommunications, Internet and e-commerce matters, social media, software applications, automotive technologies, oil and gas drilling technologies, and cargo restraint apparatus.

Businesses with global aspirations rely on Bill for worldwide IP protection, as well as the coordination of legal strategies and litigation in multinational IP disputes. He has worked with clients throughout Europe, as well as in Canada, Israel, Australia, Japan and China, and has represented domestic and foreign companies before the International Trade Commission.

Prior to joining Crowell & Moring, Bill was a shareholder at Brinks Gilson & Lione, where he served as chair of its Copyright Group. Bill maintains an active copyright practice and he continues to handle a range of cutting-edge issues in this space.

Bill is a past president and active board member of Lawyers for the Creative Arts, an association that provides pro bono legal assistance to artists and arts organizations in the Chicago area.

Representative Experience

  • Bill regularly handles business-critical patent infringement litigation for a worldwide medical device company.
  • In a case that reached the U.S. Supreme Court, Bill represented a worldwide offshore drilling contractor in a patent infringement case involving an offshore drilling rig. The case made two trips to the Federal Circuit Court of Appeals, and then settled on appeal to the Supreme Court after to the Court referred the case to the Solicitor General for review and comment.
  • Staying on the leading edge of copyright litigation, Bill has represented both a major airline and a consumer products company in cutting edge copyright disputes and in litigation with the record companies over the use of music in inflight entertainment and in videos posted on social media.
  • As part of his recent ITC practice, Bill represented a Chinese manufacturer and its U.S. subsidiary in a Section 337 case relating to microprocessors in wireless communication devices. After a five-day hearing, the ITC found the patent not infringed and refused to issue an exclusion order against the client.
  • In a record-breaking Illinois case, Bill and his colleagues won a $102 million jury verdict for a global food packaging company in a patent infringement case relating to heat-shrinkable plastic films. The case settled on appeal.
  • Bill co-authors a number of influential IP law publications, including Designing an Effective Intellectual Property Compliance Program (West Group); Copyright Litigation Strategies (ABA); Copyright Permissions (Copyright Committee of the Intellectual Property Law Association of Chicago); and the Intellectual Property Law Handbook (Illinois Institute of Continuing Legal Education).


Recognition

  • The Best Lawyers in America, Litigation - Intellectual Property and Copyright Law, 2013, 2015-2021
  • Copyright Law "Lawyer of the Year" - Chicago, The Best Lawyers in America, 2020
  • Copyright Law "Lawyer of the Year" - Chicago, The Best Lawyers in America, 2018
  • Chambers USA America’s Leading Lawyers for Business, Illinois IP Lawyers, 2013-2020
  • Illinois Super Lawyers, Intellectual Property Litigation, 2005-2017
  • IP Star, Managing Intellectual Property magazine, 2013, 2014, 2016-2020
  • Who’s Who Legal – Patents 2015, 2018
  • Who’s Who Legal - Trademarks, 2010-2012, 2014, 2015, 2017, 2018
  • Named, Euromoney Expert Guide to the World's Leading Patent Law Practitioners, 2009, 2015, 2017
  • Leading Patent Practitioner, Intellectual Asset Management magazine's "IAM Patent 1000: The World’s Leading Patent Practitioners," 2012-2017
  • Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2004-2014
  • Leading Lawyer, Trade Secrets/Unfair Competition Law, 2009
  • Named, Euromoney Guide to the World's Leading Trademark Law Experts, 2000
  • "AV" Peer-Review Rated, highest ranking for Ethical Standards and Legal Ability, Martindale-Hubbell, since 1984


Affiliations

Memberships

  • American Bar Foundation
    Fellow, 2018
  • American Bar Association
    Litigation
     Patent, Trademark & Copyright Section
  • American Intellectual Property Law Association
  • Chicago Bar Association
  • Federal Circuit Bar Association
  • Seventh Circuit Bar Association
  • Intellectual Property Law Association of Chicago
    Secretary, 2001-2003
    Board of Managers, 1999-2001
    Copyright Committee
  • Intellectual Property Owners Association
  • International Association for the Protection of Intellectual Property
  • International Patent and Trademark Association
  • International Trade Commission Trial Lawyers Association
  • Lawyers for the Creative Arts
    President, 2004-2008
    Board Member, 1985-Present
  • Richard Linn American Inn of Court
    Master
  • The Copyright Society of the USA, Trustee

Admissions

Admitted to practice: Illinois, U.S. Patent and Trademark Office (USPTO), U.S Supreme Court, U.S. District Court for the Northern District of Illinois Trial Bar, U.S. Court of Appeals for the Federal Circuit, U.S. Court of Appeals for the Seventh Circuit



Representative Engagements

  • Medcor, Inc. v. Christopher Garcia, et al, Civil Action No. 1-21-cv-02164; Northern District of Illinois, Eastern Division (2021–present). Representing Medcor in a breach of contract, trade secret, and trademark case involving delivery of COVID-related medical services.
  • Panasonic Corporation v. Getac Technology Corporation, et al, Case 8:19-cv-0118; Central District of California (2019–present). Representing Panasonic in a design patent infringement case involving rugged portable computers.
  • HealthPlan Services, Inc. v. Rakesh Dixit, et al., Civil Action No. 8:18-cv-2608; Middle District of Florida (2018-present). Representing HealthPlan Services in a trade secret and copyright infringement case involving software for a healthcare exchange.
  • Trudell Medical International v. D R Burton Healthcare LLC, Case No. 4:18-cv-00009-H-KS, E.D.N.C. (2018-present). Representing Trudell in action relating to an oscillating positive expiratory pressure device used for respiratory therapy.
  • The Wave Studio, LLC v. General Hotel Management Ltd. et al, 7-13-cv-09239, S.D. NY (2014-present). Representing American Airlines and British Airways in this copyright infringement lawsuit involving hotel photographs appearing in vacation travel booking sites.
  • Brian Dybdal Andersen v. ZTE (USA) Inc., D.N.J. (2017-2018). Represented ZTE in a copyright infringement lawsuit alleging unauthorized use of a photographer’s image on its phones. The case was resolved quickly and favorably.
  • Monaghan Medical Corp. v. Smiths Medical ASD, Inc., Case No. 1:17-cv-00712 (LPS), District of Delaware (2017-2018). Represent Monaghan in a medical device patent infringement action relating to respiratory therapy product. The case settled following claim construction and mediation.
  • S-Line LLC v. B2B Supply and Jerrell P. Squyres, Case No. 3:14-cv-02284, Northern District of Texas, Dallas Division (2014-2016). Represented S-Line in a patent infringement action relating to a bulkhead device.
  • Records, Inc., et al. v. Amway Corporation, et al., M.D. Fla. (2012-2016). Represented Amway Corporation in a copyright infringement case involving sound recordings. The case settled.
  • UMG Recordings Inc. et al. v. Global Eagle Entertainment, et al., Civil Action No. 14-cv-03466; Central District of California (2014-2015). Represented American Airlines in a copyright case involving music licensing issues. The case settled successfully as to American.
  • Trudell Medical International v. RPC Formatec GMBH, Civil Action No. 1:14-cv-032, Eastern District of Virginia, Alexandria Division (2014). Represented Trudell in a medical device patent infringement action relating to a dose counter. This case settled successfully.
  • Northgate Technologies, Inc. v. Stryker Corporation d/b/a Stryker Endoscopy; and W.O.M. World of Medicine AG, Case No. 1:12-cv-7032, Northern District of Illinois (2012-2014). Represented Northgate in a medical device patent infringement action relating to an insufflator. The case settled successfully.
  • Transocean Offshore Drilling, Inc. v. Maersk Contractors USA, Inc., Civil Action No. 4:07-CV-02392, S.D. Texas, Houston (2007-2014). Represented Maersk Drilling in a patent infringement action relating to an apparatus for multi-activity offshore drilling. The case settled on appeal after the Supreme Court referred the case to the Solicitor General for review.
  • Mougin v. French Lick Resorts and Casino, LLC, Southern District of Indiana (2011-2012). Represented resort in copyright infringement case involving artist’s claim of unauthorized use of paintings of angels. Case favorably settled after discovery.
  • Trudell Medical International v. PARI Respiratory Equipment, et al., Civil Action No. 1:10-CV-00955, USDC, Eastern District of Virginia, Alexandria (2010-2011). Represented Trudell in a patent infringement action relating to a nebulizer. This case was filed in a “rocket docket,” and was quickly and successfully resolved.
  • Arimathea LLC v. Wm. Wrigley Jr. Company et al., Civil Action No. 08cv3796, N. D. IL, Eastern Div. (2008). Represented Wm. Wrigley Jr. Company in a patent infringement action relating to a hinged lid container. The case settled successfully.
  • Centre National de Recherche Scientifique and Commissariat A L'Energie Atomique, Civil Action No. C 08-1217 PJH, N.D. Cal., San Jose Division (2008). Represented French governmental research agencies in action for declaration of inventorship and patent ownership concerning patents relating to magnetic memory devices. The case settled successfully for the firm's clients.
  • Pro Tech Monitoring, Inc. v. Elmo-Tech Ltd. and ADT Security Systems, Inc., M.D. Fla., Tampa Division (2004-2007). Represented Elmo-Tech in a patent infringement case involving electronic monitoring of offenders. Pro Tech's complaint was voluntarily dismissed.
  • Western Pennsylvania Conservancy v. Thomas A. Heinz, N.D. Ill., Eastern Div. (2005-2006). Represented Western Pennsylvania Conservancy and owner of Frank Lloyd Wright's famous Fallingwater® in copyright infringement action. The case settled successfully.
  • TNI Packaging, Inc. v. Perdue Farms Inc., N.D. Ill., Eastern Div. (2005-2006). Represented Perdue Farms in a patent infringement action relating to a method for identifying the cooking process applied to fowl. The case settled successfully.
  • Freni Brembo, S.p.A. and Brembo North America, Inc. v. Alcon Components, Ltd. , et al., N.D. Ill., Eastern Div. (2004-2005). Represented Freni Brembo and Brembo North America in a patent infringement case relating to consumer automobile and Formula 1/NASCAR disk brake systems. The case settled successfully.
  • Overture Services, Inc. v. Google Inc., N.D. Calif., San Francisco Div. (2002-2004). Represented Overture Services, Inc. in a patent infringement action relating to on-line paid search services. The case settled successfully.
  • Howard v. Revere Mills, Inc., and Walgreen Co. , N.D. Kansas (2003-2004). Represented Revere Mills in copyright infringement lawsuit. The case settled.
  • BI Incorporated v. Elmo-Tech, Ltd. and SecurityLink, Inc., U.S.D.C. Colo. (2001-2002) Represented Elmo-Tech and SecurityLink in a patent infringement action relating to electronic monitoring of offenders. The case settled successfully.
  • Blount,Inc. and Hamby v. CSI , W.D. N.C., Charlotte Div. (2000-2002). Represented Blount in a patent infringement case relating to tree delimbers. The case settled successfully.
  • Multi-Tech v. VocalTec et al., D. Minn. (2000-2001). Represented Multi-Tech in patent infringement lawsuit involving VoiP technologies. The case settled.
  • ibid., Inc. v. Tomatsu Yagi Design, N.D. Calif., San Francisco Div. (2000-2001). Represented ibid in a copyright infringement action involving misappropriation of stock photographs. The case settled successfully.
  • Varis v. Scitex Digital Printing, Inc. and Scitex Corporation Ltd., S.D. Ohio, Western Div. at Dayton (1999-2001). Represented Scitex in a patent infringement case relating to printing variable data with a page description language. The case settled successfully.
  • Energy Absorption, Inc. v. Traffix , C.D. Calif., Southern Div. (1999-2000). Represented Energy Absorption in a case involving theft of trade secrets and patent infringement relating to highway safety barriers. The case settled successfully.
  • Arista Records, Inc., et al. v. Amway Corporation, et al., M.D. Fla. (1996-1997). Represented Amway Corporation in a copyright infringement case involving sound recordings. The case settled.
  • The Rival Company v. Sunbeam Corporation et al., W.D. Missouri (1995-1999). Represented The Rival Company through appeal in a patent infringement case relating to food steamers.
  • Personal Awareness Systems, Inc. v. Financial Training Resources, Inc., N.D. Ill. (1995-1996). Represented Personal Awareness Systems in a copyright infringement case relating to performance testing materials. The case settled successfully.
  • Re-Source America, Inc. v. Republic Packaging Corp. (1994). Represented Republic Packaging in a patent infringement case relating to recyclable packaging. The case was settled on appeal to the Federal Circuit.
  • Viskase Corp. v. W.R. Grace & Co.-Conn, N.D. Ill. (1993-1992). Represented Viskase in a patent infringement case relating to heat-shrinkable plastic films. The case settled successfully.
  • Roadmaster Corp. v. NordicTrack, Inc., N.D. Ill. (1993-1994). Represented Roadmaster in a patent and trade dress infringement case relating to an exercise apparatus. The case settled successfully.
  • Rockwell Graphic Systems, Inc. v. DEV Industries, Inc., et al., N.D. Ill. (1990-1991). Represented Rockwell Graphic Systems on appeal in a trade secret misappropriation case relating to the theft of manufacturing drawings for printing press components.
  • Mechanical Dynamics & Analysis, LLC v. Richard J. Ruzzo, Case No. 1:18-cv-05639, N.D. Ill. (2018). Represented MD&A in Trade Secret Action. Case resolved on Consent Judgment.
  • Trudell Medical International v. D R Burton Healthcare LLC, Case No. 4:18-cv-00009-H-KS, E.D.N.C. (2018-present). Action relating to an Oscillating Positive Expiratory Pressure Device.
  • In The Matter of Innovaro, Inc. f/k/a UTEK Corporation v. Peter Skarzynski and David Crosswhite, AAA Arbitration No. 01-15-0002-8130 (2014-2017). Represented respondents in employment arbitration dispute involving alleged improper use of confidential information. Respondents prevailed on summary judgment and were awarded fees and costs of the arbitration.
Trials
  • Certain Wireless Consumer Devices and Components Thereof, Inv. No. 337-TA-853. Represented ZTE Corporation and ZTE (USA) Inc. in an ITC Section 337 case relating to microprocessors in wireless communication devices and the clocking thereof. After a five day hearing and Commission review, the ITC found the asserted patent not infringed and refused to issue an exclusion order against ZTE and its co-respondents.
  • Transocean Offshore Drilling, Inc. v. Maersk Contractors USA, Inc., Civil Action No. 4:07-CV-02392, S.D. Texas, Houston (2007-2011). Represented Maersk Drilling in a patent infringement action relating to an apparatus for multi-activity offshore drilling. After a seven-day jury trial, and despite a jury verdict in favor of Transocean, the court rejected the jury’s factual findings as based on insufficient evidence, and ruled in Maersk’s favor on all issues as a matter of law. Transocean’s patents were held invalid and not infringed. The Federal Circuit reversed, but then the case settled on appeal after the Supreme Court referred the case to the Solicitor General for review and comment.
  • Aero Products International, Inc. and Robert Chaffee v. Intex Recreation Corp. et al., N.D. Ill. (2002-2004). Represented Aero Products International and Robert Chaffee in a patent and trademark case relating to inflatable beds. After a seven-day jury trial, the jury awarded Aero $13 million for willful patent and trademark infringement, including interest and fees. Intex was subsequently found to be in contempt of the court's injunction, and the patent award was affirmed on appeal.
  • Viskase Corp. v. American National Can Co.>, N.D. Ill. (1993-1996). Represented Viskase Corp. in a patent infringement case relating to heat-shrinkable plastic films. The case settled on appeal after a 12-day jury trial and an award to Viskase of $102 million.
  • Peabody Myers v. Vac-Con, D. Fla. (1987-1990). Represented Peabody Myers in a patent infringement action relating to sewer cleaning equipment. The case settled on appeal after a 10-day bench trial.
  • Those Characters from Cleveland v. J.J. Gams, Inc., et al., S.D. N.Y. (1986-1992). Represented J.J. Gams, Inc., et al. in a contract, trade dress, unfair competition and copyright infringement case relating to toy products. Successfully obtained reversal of TRO and won the IP side of the case after a five-day bench trial.
  • American Photo-Graphics v. Ronald D. Edhlund, Chicago, American Arbitration Association (1985-1986). Represented Ronald D. Edhlund in employment agreement dispute. Won case after six-day arbitration.
  • Oshkosh Truck v. Lockheed, N.D.Calif. (1985-1987). Represented Oshkosh Truck in a DJ action involving patent infringement, validity and license issues relating to an articulated vehicle. Won case after a four-week jury trial.
  • Moore v. Stewart, D. Arkansas (1982-1983). Represented Moore in design patent infringement, copyright infringement and unfair competition case relating to toy train whistles. Won case after four-day bench trial.
TROs and Preliminary Injunctions
  • World Kitchen (GHC), LLC v. Zyliss Haushaltwaren, AG and Zyliss USA Corporation, N.D. Ill. (2005-2006). Represented Zyliss Haushaltwaren and Zyliss USA in patent infringement action relating to salad spinner with a brake. Successfully defeated plaintiff's request for a preliminary injunction. Affirmed on appeal.
  • Tilia International, Inc. v. The Rival Company, In the Matter of Certain Home Vacuum Packaging Machines , U.S. International Trade Commission (2003-2004). Represented The Rival Company in a patent infringement action relating to vacuum packaging machines and bags used therewith. The case settled after Tilia's Motion for a Temporary Exclusion Order was successfully defeated.
  • The Rival Company v. TPI Corporation, N.D. Georgia (1996-1997). Represented The Rival Company in a copyright infringement, trade secrets, patent infringement case relating to an industrial fan company's unauthorized use of Rival's business materials and information. Filed TRO and the case settled after consent order obtained against defendant.
  • Those Characters from Cleveland v. J.J. Gams, Inc., et al., S.D. N.Y. (1986-1992). Represented J.J. Gams, Inc., et al. in a contract, trade dress, unfair competition and copyright infringement case relating to toy products. Successfully obtained reversal of TRO and won the IP side of the case after a five-day bench trial.
  • Keystone Camera Products Corporation v. Ansco Photo-Optical Products Corporation v. W. Haking Enterprises Limited, N.D. Ill. (1987-1988). Represented Keystone Camera Products in trade dress infringement case relating to colored cameras. The case settled after denial of preliminary injunction.
  • Pizazz v. Perfect Pearl, N.D. Ill. (1984). Represented Pizazz in a copyright infringement case relating to costume jewelry. Successfully obtained a TRO and case settled shortly thereafter.


Publications

  • Illinois Institute for Continuing Legal Education (IICLE) Intellectual Property Law Handbook (2013) (April 2013). Authors: William H. Frankel and Marc V. Richards
  • "Feature Article: Managing IP North America Awards," Managing Intellectual Property (March 26, 2009). Author: William H. Frankel
  • "Corporate Compliance Series: Designing An Effective Intellectual Property Compliance Program, Thomson-West," Thomson-West (2007-Present ). Author: William H. Frankel
  • SkyRadio, contributing speaker on copyright law topics, heard on United, Delta and American Airlines (July/August 2006). Author: William H. Frankel
  • "Feature Profile: "The Invisible Hand ? Intellectual Property Branding Provides a Competitive Advantage," Vol. 33, No. 4," Monitor (April 2006). Author: William H. Frankel
  • "Copyright Law and the New Library of Alexandria," IP Law 360 (March 30, 2006). Author: William H. Frankel
  • Intellectual Property Handbook (2005). Author: William H. Frankel
  • "2008 Intellectual Property Handbook," co-author, Illinois Institute of Continuing Legal Education, updated from 2005 (January 1, 2005). Author: William H. Frankel
  • "Copyright Permissions," Copyright Committee of the Intellectual Property Law Association of Chicago (1996, 2005). Author: William H. Frankel
  • "Feature Profile: Pumping Up the Patents," IP Law & Business (October 2004). Author: William H. Frankel
  • ""Strategic Intellectual Property Compliance Programs: The Role Of The CFO," Vol. 1, No. 3," Chief Legal Officer (Summer 2002). Author: William H. Frankel
  • Designing An Effective Intellectual Property Compliance Program (1993). Author: William H. Frankel


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