Overview
Eley O. Thompson is a partner and intellectual property lawyer with Foley & Lardner LLP. Eley brings more than a quarter-century of experience in counseling and litigating patent, trade secret and trademark matters for both property owners and respondents. He has led litigation teams handling complex cases that resulted in more than $100 million in recoveries. Multi-national corporations and Fortune 100 companies often call on him to handle their significant intellectual property matters.
His experience spans diverse technologies such as aero-space, high-tech mobile, cloud based systems, polymers and specialty chemicals, quantum devices, nanodevices, RFID, video games, manufacturing technologies, filter technologies, medical devices including gene sequencing and machine vision, among others.
In addition to litigation, Eley provides counsel on patent program strategies and assessments to fine tune programs for maximum value and impact. Eley establishes IP programs that produce high value assets at a high rate for strategic business goals. Eley also provides counsel on acquisitions and risk investigations for mergers and acquisitions. He has handled post-grant proceedings before the USPTO, including interference proceedings. For multi-national companies, Eley handles prosecution of large intellectual property portfolios, including ones with more than 1,000 active assets.
Prior to joining Foley, Eley was a partner with a highly regarded intellectual property boutique firm. Before entering the legal field, he conducted research in artificial intelligence systems and thick and thin film technologies. He also conducted post-graduate study in polymer chemistry.
Representative Experience
- Litigated fundamental patents establishing the video game industry, and represented an inventor who has since been inducted into the National Inventors Hall of Fame.
- Represented a drywall manufacturer in asserting patent infringement and misappropriation of trade secrets. The case settled shortly before trial where the client recovered over $100 million.
- Represented one of the largest tire manufacturers asserting design patent and various unfair competition claims. The settlement included damages and an injunction.
- Defended a pump manufacturer against claims of patent infringement. A judgment of non-infringement was obtained through trial.
- Represented an outdoor clothing company in multi-district litigation relating to trademark, cyber-squatting, and various other unfair competition claims. After presenting a motion for summary judgment and proving that the opposing party had destroyed compelled documents, the case settled.
- Defended a label film manufacturer against claims of patent infringement and successfully obtained summary judgment of non-infringement for his client.
- Represented a drywall manufacturer in successfully obtaining a Temporary Restraining Order (TRO).
- Represented a specialty chemical manufacturer in asserting patent rights. After successfully proving through evidentiary hearing that the accused infringer had fabricated evidence, the Court found that there had been fraud on the court.
Thought Leadership
Eley was an invited guest of the White House and USPTO, where he participated in roundtable discussions on patent reform legislation. He has written and spoken on various topics, including patent reform, formulating trade secret damages, creating clean rooms, and developing litigation alternative fees.
Recognition*
- Rated as AV Preeminent®, the highest performance rating in the Martindale-Hubbell® Peer Review Ratings™ system
- Selected by his peers for inclusion in The Best Lawyers in America© in the field of Litigation – Intellectual Property (2019–2022)
- Selected for inclusion in the list of Illinois Super Lawyers® (2011–2012, 2014–2016, 2018–2021), selected for Blue-Ribbon Panel
- Global Fellow of the Federal Circuit Bar Association
- Multiple Recipient of Outstanding Committee Award for Litigation Committee – Intellectual Property Owners Association (IPO)
- Awarded Silver Most Valuable Member – Intellectual Property Owners Association
- Selected by peers as a Leading Lawyer in Intellectual Property Law – Leading LawyersSM
Selected Publications and Presentations
Eley co-authored the article, “Trade Secret Owners Lack Federal Protection,” which was published in the Chicago Daily Bulletin (January 16, 2012). He also wrote and spoke about “The Rising Importance of Trade Secrets in an Age of WikiLeaks,” VPP-Rundbrief (January 2012).
Education
Eley earned his law degree from George Mason University (J.D., 1990). He graduated with a degree in electrical engineering from Virginia Polytechnic Institute and State University (B.S., 1987). He has also conducted post-graduate studies in polymer chemistry.
Admissions and Professional Memberships
Eley is admitted to practice in Illinois and the District of Columbia. He is registered to practice before the U.S. Patent and Trademark Office. He also holds court admissions with the U.S. Supreme Court, the U.S. Court of Appeals for the Federal District, and the U.S. District Court for the Northern District of Illinois, and the Western and Eastern Districts of Wisconsin.
His professional memberships include vice chair of the Intellectual Property Owners Association (IPO), Litigation Committee; Sedona Conference, Working Group 10, Patent Litigation Best Practices; the Federal Circuit Bar Association.
*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.