Marshall J. Brown

Partner

Overview

Marshall J. Brown is a partner and intellectual property lawyer with Foley & Lardner LLP, where he has extensive legal experience in many areas of patent counseling, working with companies specializing in areas such as engine and power generation systems, fluid filtration technologies, consumer products, computer software products, telecommunications technologies, medical devices, electrical devices, computer networks and systems, and various types of audio and video communication protocols. Mr. Brown’s counseling work includes U.S. and foreign patent prosecution; patent clearance matters; patent infringement and validity opinions; freedom to operate studies; and intellectual property due diligence in mergers and acquisitions. He is a member of the Mechanical & Electromechanical Technologies, Electronics, Trademark, Copyright & Advertising and China Practices.

Mr. Brown also regularly provides technical and legal support on patent litigation matters. A few of Mr. Brown’s recent litigation cases include:

  • Davco Technology, LLC. v. Fleetguard, Inc. and Web Enterprises, Inc., where Mr. Brown represented Fleetguard in a case involving fuel filter technology
  • Smart Parts, Inc. v. WDP, Inc. where Mr. Brown represented WDP against allegations of patent infringement regarding electropneumatic paintball guns
  • Hayes Lemmerz International, Inc. v. Kuhl Wheels, LLC and Epilogics Group, where Mr. Brown represented Kuhl Wheels in a case involving automobile wheels.

Mr. Brown has worked with a wide variety of companies, ranging from consumer product manufacturers to health care providers and medical device companies, on a variety of trademark issues as well. These issues have involved trademark registration, enforcement and licensing, and domain name protection and enforcement.

Prior to joining Foley, Mr. Brown interned in the design and development areas of Ford Motor Company’s Light Truck division.

Recognition

Mr. Brown has been selected for inclusion in the 2008-2010 and 2013-2014 Illinois Super Lawyers–Rising Stars® Editions.*

Publications

Mr. Brown’s recently authored articles include "Getting the Most Out of Your IP Budget in Today’s Economy," published in the Spring 2010 edition of Innovation (Quarterly of the Industrial Designers Society of America), and "Design Patent Cases Post-Egyptian Goddess – Views from the District Courts," published in the April 16, 2009 edition of BNA Patent, Trademark & Copyright Journal.

Education

Mr. Brown graduated from the University of Michigan (B.S.E., magna cum laude, mechanical engineering, 1996; J.D., cum laude, 1998), where he was executive editor of the Michigan Telecommunications and Technology Law Review.

Admissions and Professional Memberships

Mr. Brown is admitted to practice in Illinois and the federal district court for the Northern District of Illinois, and is registered to practice before the U.S. Patent and Trademark Office. He is a member of the Chicago Bar Association and the American Intellectual Property Law Association. Mr. Brown is also an affiliate member of the Industrial Designers Society of America.

*The Illinois Supreme Court does not recognize certifications of specialties in the practice of law and no award or recognition is a requirement to practice law in Illinois.

Representative Matters

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For more than two decades, Foley has provided a range of legal services to Peerless Industries Inc., a leading U.S. manufacturer of audiovisual mounting equipment for commercial and residential installations. After Peerless moved a portion of its manufacturing plant overseas from Illinois to China in 2005, the company experienced a number of production and patent-related issues. The company therefore decided to bring its production capabilities back to the United States and acquired a new facility in Aurora, Illinois, where it has since been manufacturing its entire product line in-house. Foley supported the company’s reshoring effort from start to finish. The firm provided a wide variety of IP counseling and prosecution services to help protect Peerless’ rights in both China and the United States. Foley also assisted Peerless with real estate financing and transactions for the sale and purchase of its new production facility. Our attorneys have also regularly provided counseling and other services to Peerless relating to its previous activities in China and the effects of its reshoring activities to the United States.
Advised CFM Corporation, in the sale of certain of its electrical fireplace and gas heater businesses to GHP Group, Inc., pursuant to a Chapter 11 bankruptcy proceeding. The sale was part of a larger representation of CFM Corporation in its bankruptcy proceedings.
Advised CFM Corporation, in the sale of certain of its indoor-portable heater, wall-mount blue flame and infrared heaters and a propane tank top outdoor radiant heater product lines to Mr. Heater, Inc., a manufacturer of portable residential, recreational and commercial heating products, pursuant to a Chapter 11 bankruptcy proceeding. The sale was part of a larger representation of CFM Corporation in its bankruptcy proceedings.