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 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.
