Eley Thompson is a partner and intellectual property lawyer with Foley & Lardner LLP. He brings more than a quarter-century of experience in counseling and litigating patent, trade secret and trademark matters for both property owners and respondents. Eley has led litigation teams handling complex cases that resulted in more than $100 million in recoveries. He has first-chaired cases before the International Trade Commission (ITC), district courts across the country, appeals to the Court of Appeals for the Federal Circuit and other reviewing agencies. He has led matters involving international litigation (co-pending in multiple countries and jurisdictions), cross-border issues such as anti-suit injunctions, domestic and foreign discovery, privilege and professional secrecy, etc. Multi-national corporations and Fortune 100 companies often call on Eley to handle their significant intellectual property matters especially when the matters involve minimally charted areas of law and practice.
Eley’s experience spans diverse technologies such as Standard Essential Patents (SEPs), 2G/3G(UMTS)/4G(LTE)/5G cellular, cellular based consumer devices, microelectronics, manufacturing artificial intelligence, biomanufacturing and synthetic biology including fermentation and enzymatic reactions, aero-space communication and defense systems, high-tech mobile systems, cloud based systems, polymers and specialty chemicals, quantum devices, nanodevices, RFID, video games, technologies for manufacturing, filter technologies, medical devices including gene sequencing and machine vision, among others.
In addition to litigation, Eley provides counsel on patent portfolio strategies and assessments to fine tune programs for maximum value and impact. He establishes IP programs that produce high value assets at a high rate for strategic business goals. Eley also leads deal teams for both due diligence and agreement negotiation/drafting involving highly technical ventures. He has handled inter-party review (IPR) proceedings before the USPTO and on appeal, including interference proceedings. For multi-national companies, Eley has handled 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 Standard Essential Patents (SEPs) in relation to 2G/3G(UMTS)/4G(LTE) technologies including obtaining favorable rulings in the district court that were affirmed on appeal.
- 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.
Awards and Recognition
- Selected by his peers for inclusion in The Best Lawyers in America© in the field of Litigation – Intellectual Property (2019–2023)
- Selected for inclusion in the list of Illinois Super Lawyers® (2011–2012, 2014–2022, 2024), selected for Blue-Ribbon Panel
- Global Fellow of the Federal Circuit Bar Association
- Served on Steering Committee of The Sedona Conference
- Multiple Recipient of Outstanding Committee Award for Litigation Committee – Intellectual Property Owners Association (IPO)
- Invited attendee to The Naples Roundtable, Leahy Institute of Advanced Patent Studies
- Selected to Amicus Brief Committee which is by appointment only. Has represented the Intellectual Property Owners Association (IPO) in amicus briefs before the Court of Appeals for the Federal Circuit.
- Awarded Silver Most Valuable Member – Intellectual Property Owners Association
- Selected by peers as a Leading Lawyer in Intellectual Property Law – Leading LawyersSM
- Rated as AV Preeminent®, the highest performance rating in the Martindale-Hubbell® Peer Review Ratings™ system
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Affiliations
His professional memberships have included being a member by appointment to the Amicus Brief Committee of the Intellectual Property Owners Association (IPO), and vice chair of the Litigation Committee; Sedona Conference, Steering Committee, and Working Group 10, Patent Litigation Best Practices; the Federal Circuit Bar Association, Global Fellow
Presentations and Publications
- Co-authored the article, “Trade Secret Owners Lack Federal Protection,” which was published in the Chicago Daily Bulletin (January 16, 2012)
- Wrote and spoke about “The Rising Importance of Trade Secrets in an Age of WikiLeaks,” VPP-Rundbrief (January 2012).
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.