Thomas E. Williams

Partner

Overview

Tom, a registered patent attorney and former rocket engineer, helps clients develop, enforce, defend, and monetize global patent and trademark portfolios. He represents clients in a variety of industries and technologies, including HVAC systems, retail consumer products, product dispensers and product packaging, aerospace, automotive, and rail technologies, fire protection equipment, and numerous web and/or software applications for technology-focused companies.

Tom helps companies plan and implement product innovation protection, enforcement/defense, and monetization strategies to mitigate risk to products involving a wide range of technologies, including: financial services; consumer products, dispensers, packaging, and displays; electric heating elements for consumer appliances; vehicle drive and control systems; motors and pumps/hydraulic systems; refrigeration systems and heat exchangers; electronic flight bag systems; aircraft control systems; propulsion technologies including rocket engines and turbine engines; electromechanical fuel controls; aerial firefighting equipment; fire protection garments; Internet and software applications; telecommunications and data encryption technologies; consumer credit and finance technologies; electronic payment technologies; surgical and dental instruments; healthcare IT and MRI technologies; and countless software as a service (SaaS) applications.

Tom's practice includes preparing and negotiating a variety of business agreements, including IP licenses, supply, vendor, joint venture, consulting, settlement, and coexistence agreements. He manages IP-related due diligence activities in corporate transactions and handles IP matters in federal court and before the Patent/Trademark Trial and Appeal Boards (PTAB/TTAB) to protect clients’ interests.

Tom monitors trends concerning the commercial use of unmanned aircraft systems (UAS or drones). He advises clients on the impact of emerging technologies in the field and on the evolving federal and state regulatory landscape governing drone use.

Before entering the legal profession, Tom enjoyed working as a rocket engine turbomachinery engineer on NASA’s Space Shuttle Main Engine (SSME). Tom’s experience supporting more than 47 successful space shuttle missions led to a position designing the liquid oxygen and liquid hydrogen turbopumps for the RS-68 liquid main engine for the Delta IV Evolved Expendable Launch Vehicle (EELV). Tom draws on his substantial engineering and manufacturing experience to counsel clients on IP-related matters in diverse technical fields.

Career & Education

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    • Fuel Control Valve Project Manager, Knowles Corporation, 1999 – 2000
    • Gas Turbine Engine Senior Designer/Project Engineer, Rolls-Royce Corporation, 1997 – 1999
    • Rocket Engine Turbomachinery Engineer, The Boeing Company, 1988 – 1997
    • Fuel Control Valve Project Manager, Knowles Corporation, 1999 – 2000
    • Gas Turbine Engine Senior Designer/Project Engineer, Rolls-Royce Corporation, 1997 – 1999
    • Rocket Engine Turbomachinery Engineer, The Boeing Company, 1988 – 1997
    • DePaul University College of Law, J.D., 2002
    • California State University, Northridge, M.S.M.E., 1995
    • Purdue University, B.S.A.A.E., 1988
    • DePaul University College of Law, J.D., 2002
    • California State University, Northridge, M.S.M.E., 1995
    • Purdue University, B.S.A.A.E., 1988
    • Illinois
    • U.S. Patent and Trademark Office (USPTO)
    • Illinois
    • U.S. Patent and Trademark Office (USPTO)

Thomas's Insights

Client Alert | 7 min read | 07.24.24

Supercharge Patent Prosecution With Examiner Interviews

Examiner interviews are an optional but important and effective part of patent examination process that are beneficially conducted early and, in some cases, more than once during patent prosecution.  Interviews are in-person, telephone or online conferences between the Examiner and the patent attorney or patent agent representing the patent applicant. When conducted early in the patent examination process, interviews may reduce the time required to obtain a patent and increase the odds of obtaining an allowance.  As discussed below, interviews can help foster a cooperative interaction with the examiner to supercharge the prosecution process....

Representative Matters

  • RBC Nice Bearings et. al. v. Peer Bearing Company,3:06-CV-01380 (TLM) (D. CONN)/ 10-383 (2nd Cir.) - Assisted in defense of trademark and copyright infringement claims involving ball bearings. Client won partial summary judgment in the district court, which was affirmed on appeal by the Second Circuit. Plaintiff dismissed all remaining claims with prejudice.
  • Highway Equipment Company v. Cives Corporation and Monroe Truck Equipment, Inc., C04-147 LRR (N.D. IA) - Assisted in action for declaratory judgment of non-infringement involving truck bodies. Patent owner dismissed all claims with prejudice after a Markman Hearing.
  • Miscellaneous Matters: Prevailed on summary judgment and successfully awarded attorney fees in the district of Delaware in trade secrets litigation; District court in a patent infringement lawsuit adopted client’s patent claim construction; Negotiated settlement of numerous trademark oppositions.

Thomas's Insights

Client Alert | 7 min read | 07.24.24

Supercharge Patent Prosecution With Examiner Interviews

Examiner interviews are an optional but important and effective part of patent examination process that are beneficially conducted early and, in some cases, more than once during patent prosecution.  Interviews are in-person, telephone or online conferences between the Examiner and the patent attorney or patent agent representing the patent applicant. When conducted early in the patent examination process, interviews may reduce the time required to obtain a patent and increase the odds of obtaining an allowance.  As discussed below, interviews can help foster a cooperative interaction with the examiner to supercharge the prosecution process....

Thomas's Insights

Client Alert | 7 min read | 07.24.24

Supercharge Patent Prosecution With Examiner Interviews

Examiner interviews are an optional but important and effective part of patent examination process that are beneficially conducted early and, in some cases, more than once during patent prosecution.  Interviews are in-person, telephone or online conferences between the Examiner and the patent attorney or patent agent representing the patent applicant. When conducted early in the patent examination process, interviews may reduce the time required to obtain a patent and increase the odds of obtaining an allowance.  As discussed below, interviews can help foster a cooperative interaction with the examiner to supercharge the prosecution process....