Overview Experience Events News Intelligence Jeanne M. Gills Partner jmgills foley.com Download vCard Connect Jeanne M. Gills Jeanne M. Gills is a partner and intellectual property lawyer with Foley & Lardner LLP. She is vice chair of the firm’s national Intellectual Property Department and is a member and former vice chair of the Intellectual Property Litigation Practice. She handles complex patent, trade secret, trademark, copyright, and unfair competition litigation and appeals—including USPTO post-grant proceedings—in diverse industries ranging from electronics to biotechnology. Recent trial experience includes the 2013 TAS v. Cummins jury trial on a license covering engine technology and her successful oral argument on behalf of Petitioner in IPR2013-00178 regarding synthetic diesel fuel wherein all of Patent Owner’s claims were held invalid and its Motion to Amend was denied. Her career as a trial lawyer has also encompassed “bet the company” cases (e.g., $500 MM+ at stake) such as DeKalb v. Pioneer regarding patents on genetically engineered corn. With her electronics background and given her attorney registration to practice before the USPTO, she has litigated and counseled clients with respect to many patent and technology cases involving semiconductors, memory devices, wireless devices, plasma displays, optical projectors used in aircraft, diesel engines, and other complex electronics and computer software and business method matters. Her appellate and trial experience includes federal jury trials, ITC proceedings, injunction/TRO proceedings, and arbitrations in multiple forums and arguments before the Federal Circuit and USPTO, including serving as counsel in numerous IPR and CBM proceedings relating to chemical technologies, personal care products, and business methods. She has also conducted discovery abroad throughout Europe, Singapore, and Japan. Her litigation experience has dovetailed into counseling clients on global IP strategy with an emphasis on negotiating license or transfer agreements involving IP rights. Recent experience includes involvement in the division of patent/technology assets for a Fortune 50 company’s split into two entities, as well as negotiation and drafting of several IP agreements for other Fortune 500 companies. Other representative IP experience includes: counseling related to product configuration trade dress and use of color as a trademark; handling TTAB and UDRP matters; resolving copyright ownership disputes, particularly in the areas of computer software and associated documentation; handling contractual disputes concerning IP rights and the theft or use of IP by a company’s former employees or independent contractors; counseling clients on IP holding companies, including how to maximize value from an IP portfolio when certain assets are likely to be the subject of IP litigation; and handling cases involving the intersection of trade dress, design patent, and utility patent protection for consumer and industrial products. Recognition She has been recognized among: The Best Lawyers in America© (Food & Beverage, since 2015, and Litigation – Intellectual Property, 2017) given her representation of many food/beverage and consumer products companies and work on IP matters; IAM Patent 1000 – The World’s Leading Patent Practitioners (2012-2014, 2016); Managing IP’s Top 250 Women in IP (2013) & IP Stars (2013-2015); The Legal 500 US (Patent/Trade Secret Litigation, 2007, 2010; Patent Transactional, 2014-2015); Leading Lawyers (Patent Law, 2012-2013); LawDragon 3000 for IP (2011); Leadership Excellence in the Law Award (National Diversity Council, 2014); the country’s “Top Minority IP Partners” by AIPLA & MCCA (2003); the Nation’s Best Advocates: 40 Lawyers Under 40 Award by NBA & IMPACT (2010); the less than 5% of Illinois attorneys selected for inclusion in Illinois Super Lawyers® (2005-2006, 2008–2016); and the notable lawyers in Who’s Who in Black Chicago (1st/3rd eds). In addition, Ms. Gills has been Peer Review Rated as AV® Preeminent™, the highest performance rating in Martindale-Hubbell’s peer review rating system. An “AV” rating is given to those attorneys with very high to preeminent legal ability and ethics and is a testament to the fact that Ms. Gills’ peers rank her at the highest level of professional excellence. She was named among the 2015 Most Influential Black Lawyers by Savoy.* Education Ms. Gills is a graduate of the University of Chicago Law School (J.D., 1994) and Michigan State University (B.S., with honors, electrical engineering, 1991). She is admitted to practice in Illinois, the Federal Circuit, the Seventh Circuit, and various federal district courts, in addition to the United States Patent & Trademark Office. Publications and Presentations Ms. Gills has authored (and regularly updates) a chapter on Experts for the Patent Litigation Strategies Handbook (BNA Books). She is also frequently quoted by publications such as Law360, Managing Intellectual Property, BNA’s Patent Trademark & Copyright Journal, and The Wall Street Journal. In addition, she regularly presents seminars, and publishes on a variety of IP topics, including: Chair, Patent Litigation Seminar (PLI, Chicago, 2009-2016) “Get Ready Now! Boosting Your IP Fitness for the Next Business Cycle” (Chair, F&L 12th Annual IP Conference, 9/16) “Women of Color and Diversity and Inclusion at Firms and in Corporations: Working Group to Develop Solutions for 2017” (CCWC, 9/16) Defend Trade Secrets Act: The Latest in Trade Secrets Developments (Podcast, 7/16) “In-House Counsel Panel: Is the Billable Hour Dead?” (NBA Annual Conference, 7/16) “The Ins and Outs of Equity Partnership” (The Chicago Committee, 7/16) “What’s Reasonable? Protecting And Enforcing Trade Secrets” (AIPLA 2016 Spring Meeting) Presentation: What’s Reasonable? Protecting And Enforcing Trade Secrets Article: What’s Reasonable?—Protecting And Enforcing Trade Secrets“IP Litigation Preparedness & Hot IP Topics” (Client CLE, 3/16) “Check, Raise, or Fold: The Risky Business of IP” (Chair, F&L 11th Annual IP Conference, 9/15) “Trade Secret Protection and Enforcement in the U.S.” (NBA Annual Conference, 7/15) “Patents/Trade Secrets Overview” (Client CLE, 4/15 and 7/15) “What’s next? Emerging technologies your clients are talking about” (ACC Seminar, 3/15) “Hot Topics in IP and Advertising/Promotions” (Client CLE, 2/15) “Patent Litigation: Jury Considerations” (Practical Law Webinar, 1/15) “Strategies for Winning NPE Litigation” (Client CLE, 11/14) “IPx: Evolution to Revolution” (Chair, F&L 10th Annual IP Conference, 9/14) “Right-sizing the Approach in Defending Against NPE Claims” (MIP International Women’s Leadership Forum, 6/14) “Supreme Court Relaxes ‘Exceptional’ Case Standard in Pair of Fee-Shifting Patent Cases” (Article, IP Magazine, 5/14) “Apple v. Samsung: Implications for Patent Infringement Cases, Injunctions and Sales Ban” (dri IP Seminar, 5/14) “US Supreme Court Rules That Patentee Maintains Burden of Proving Infringement in Actions Brought by Licensee,” (Article, Licensing Journal, 3/14) “Board Oversight of IP Strategy” (F&L National Director’s Institute, 11/13) “How Bad Is It, Counselor?...What Do You Mean, “I Don't Know?!?” Evaluating Your Litigation Exposure” (ACC Annual Conference, 10/13) “IP Issues at the Frontline—Offensive & Defensive Strategies That Win the Game” (Chair, F&L 9th Annual IP Conference, 10/13) “User Driven IP 4.0: High Stakes. High Rewards” (Chair, F&L 8th Annual IP Conference, 10/12) “Hot Topics in IP (in light of Apple v. Samsung & AIA)” (BWLA Presentation, 10/12) “IP Law Update (covering recent Trade Dress/Patent Decisions & AIA)” (Client CLE, 9/12) “An Overview of US Patent Reform (The America Invents Act)” (Client CLE, 11/11) “Patent Wars: The Game Show-Prosecutors vs. Litigators” and author “In Drafting A Joint Development Agreement, Who Should Own The Jointly Developed IP?” (AIPLA Annual Meeting, 10/11) “The Exponential Speed of Innovation: Is IP Driving Your Business?” (Chair, F&L 7th Annual IP Conference, 9/11) “Microsoft v. i4i: Supreme Court Upholds ‘Clear and Convincing Standard’—Is It Really Business As Usual?” (PLI, 6/11) “Winning a Game of Inches: Gaining Momentum Through IP” (Chair, F&L 6th Annual IP Conference, 10/10) “Patenting Business Methods and Other Recent Developments” (Client CLE, 1/10) “Being A Partner” (F&L Presentation, 1/10) “What IP Issues Keep General Counsel Up At Night?” (Chair/Panelist, F&L 5th Annual IP Conference, 10/09) “Extracting Value from IP in the Reform Era: What It Takes to Build and Protect Your Core Assets in Uncertain Times” (Argyle Corporate Leadership Forum, 9/09) “Networking For Success” (F&L Mentor/Mentee Seminar, 6/09) “Emerging Legal Trends In Patent Law” (MCCA CLE Expo, 3/09) “KSR: Pharmaceutical Cases Revisited 18 Months Later” (BNA/ABA IP Section Conference, 10/08) “IP Gone Wild?” (Moderator and Panelist, F&L 4th Annual IP Conference, 9/08) “Strategic Patent Litigation—Venue Selection, Use of IP Injunctions & Defenses” (IP Section Mtg. NBA Annual Conference, 7/08) Pre-Conference Workshop on "Creating & Managing Patent Portfolios” (2nd Annual IP Summit for Wireless Tech & New Media, 6/08) “IP Litigation in the 21st Century—A Look at In re Bilski, Post-KSR Litigation Strategies, & Stats on Best Patent Defenses” (Northwestern Journal of Technology & IP Annual Symposium, 4/08) “At the Razor's Edge: Prosecuting and Defending Against Patent Infringement Claims Post-KSR” (F&L Legal News: Medical Devices Newsletter, 1/08) “Strategic Venue Selection & Use of IP Injunction” (F&L Litigation Conference, 12/07) “Navigating The Changing Tides of Patent Litigation” (Martindale Hubbell/Lexis Nexis Counsel2Counsel Forum, 11/07) “Views from the Bench: Remedies in IP Litigation Cases—A Roundtable of Judges from the Southern District of New York” (Chair/Panelist, F&L 3rd Annual IP Conference, 10/07) “Unexpected Results? —The Litigation Landscape Post-KSR in Pharmaceutical Cases” (BNA/ABA IP Section Conference, 10/07) “Avoiding a Career Silo: Understanding and Converting Your Value” (10th Annual CYOC Career Development Conference, IP Law Pre-Conference 9/07) “Hot Topics in Trademark Law” (DuPont Legal Conference, 9/07) “KSR v. Teleflex: Its Practical Implications for Patent Practice” (IPO Annual Meeting, 9/07) “KSR International Co. v. Teleflex Inc.—Pharmaceutical Prosecution & Litigation Strategies” (Client CLE, 6/07) “Taking A Company's IP To The Next Level” (Client CLE, 6/07) “Use of Expert Witnesses in Patent Litigation” (BNA/ABA Seminar, 11/06) “Are Opinions of Counsel Still the Best Defense to Willfulness in IP (Patent & Trademark) Litigation” (F&L Corporate Counsel Seminar, 10/06) “Battling Global IP Piracy & Counterfeiting” (Chair, F&L 2nd Annual IP Conference, 9/06) “Surfing Trademark Issues on the Web” (F&L White Paper, 9/06; Corporate Legal Times and F&L Webinar, 3/05) “Crafting an Effective Patent Invalidity Opinion—Is it the Last Bastion of Defense?” (PLI, 2003-2006; IP Litigator article, 6/04) “Being and Finding Good Mentors” (BWLA, 3/06) “Trade Secret Protection in the 21st Century” (F&L Litigation Conference, 12/05) “The Dilution Dilemma—Litigating Dilution Claims and the Trademark Dilution Revision Act of 2005” (ABA/Navigant Consulting IP Roundtable, 12/05) “Seize the Day: Hearing an Ex Parte Seizure Order for Copyright and Trademark Counterfeiting” (AIPLA Annual Meeting, 10/05) “IP Roundtable on Key Patent Appellate Cases, including Blackberry, Lemelson, and Illinois Tool” (F&L Corporate Counsel Seminar, 10/05) “Digital, Wireless & New Media Technologies—Is Your IP Future in the Right Hands?” (Chair/Founder, F&L 1st Annual IP Conference, 9/05) "Discovery Issues in Patent Litigation” (PLI, 9/05) “Internet-Related Trademark Litigation Issues & Trends” (INTA, 5/05) “New Insights into IP Law in China”—Presenter on Trade Secret Protection (F&L Corporate Counsel Seminar, 3/05) “Preparing to Initiate or Defend a Patent Lawsuit” (ABA, 10/04) “IP Litigation: Avoiding the Money Pit” (Corporate Legal Times & F&L Webinar, 7/04) “How Do You Measure Up? Metrics And Measurements for Law Departments” (Counsel to Counsel Forum, 2/04) “How to Litigate in the Digital Decade” (Defendants' Patent Counsel (doing damages expert cross-exam and closing argument) in Mock Trial Plenary Session involving patent and trademark infringement; AIPLA Mid -Winter Institute, 1/04) “Bank One: Law Firm Diversity Symposium” (Panelist, 12/03) “A Woman and Minority Perspective on Client Development” (CBA, 9/03) “IP Litigation and Opinions — Using Litigation Knowledge to Advance Career Success” (NBA Annual Convention, 8/03) “An Ounce of Prevention — Smart Patent Prosecution Can Minimize Litigation Oops” (Article, IP Litigator, 7/03) “Avoiding Litigation Pitfalls through Effective Patent Prosecution” (Article, Corporate Counsel, 7/03; and ABA IP Seminar, 4/03) “Getting Off To A Good Start — Drafting A Patent Application to Survive Prosecution and Litigation” (AIPLA Annual Meeting, 2002) “An IP Litigation Perspective on Licensing” (PLI, 2001) “Section 112 Cases and the Impact of Festo” (PLI, 2001) Contributor to the IPLAC Litigation Committee’s “Federal Circuit (2001 and 2002) Review of Markman Issues” Professional Memberships Ms. Gills has previously served on the firm’s Strategic Planning, Diversity, and Recruiting Committees and was the former chair of the firm’s African-American Attorneys Affinity Group. She is a member (or participant in the activities) of several bar associations (or IP sections thereof), including AIPLA, ABA, INTA, CBA, NBA, CCWC, MCCA, IPLAC, BWLA, and CCBA. She is a staunch champion of diversity in the legal profession and is a founding member of the Black Patent Network and the Chicago Black Partner Alliance. Affiliations and Community Involvement Ms. Gills currently serves on the board of the Illinois Campaign for Political Reform and previously served for six years on the Evening Associates Board of the Art Institute of Chicago and mentored high school students through Links Unlimited. *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.