Jacob C. Bachman

Overview

Combining both patent litigation and patent prosecution experience, Jacob Bachman brings a 360-degree perspective to protecting and enforcing intellectual property assets. His dual focus provides a window onto how both litigators and patent prosecutors think—insights he uses for the benefit of his clients.

Jacob’s practice covers a wide range of innovations including medical devices, household appliances, automobile navigation and entertainment systems, articles of footwear, manufacturing and packaging, office furniture, and exercise equipment, among others. A mechanical engineer by training, Jacob takes a practical, hands-on approach to client counseling, often working directly with inventors to devise patent protection, enforcement, and avoidance strategies, with respect to both utility and design patents.

As a litigator, Jacob has been involved in all phases of trial preparation and motion practice for patent, trade secret, and copyright cases. He has also prepared and defended against petitions for inter partes review of patents before the United States Patent Office. As a prosecutor, he has devised and implemented strategies to develop patent portfolios in the United States and internationally. He regularly drafts utility and design patent applications, as well as infringement, clearance, and patentability opinions.

Jacob communicates frequently and clearly with clients to gain an understanding of their ultimate business goals. Thinking forward, he focuses on the tactics and strategies that lead most directly to those objectives, ensuring that client investment justifies the possible outcome.

Prior to joining Crowell & Moring, Jacob was a shareholder at Brinks Gilson & Lione.

Select Representative Matters

Represented Trudell Medical International in assertion and defense of patents relating to respiratory treatment devices.
Represented medical device leader Cook in a number of cases, including defense of a patent infringement suit filed by Boston Scientific involving gastrointestinal stent technology; and assertion of patent infringement against Endologix involving endovascular stent technology.
Represented Progressive Casualty Insurance in high-stakes infringement litigation to protect its revolutionary Progressive Snapshot motor-vehicle monitoring technology.
In a 16-day arbitration trial, helped Amway win an award of more than $25 million for misappropriation of trade secrets, breach of contract, and tortious interference—an award subsequently confirmed in district court.
Using novel defenses unique to the Internet and social media, defended Amway against copyright infringement claims in connection with videos posted to Websites such as YouTube and Vimeo.
On the prosecution side, secured and expanding a portfolio of patents for a medical device technology and product line that provides OPEP therapy to treat lung disease, aid lung hygiene, and enhance lung performance.
Assisted a leading manufacturer of footwear expand an international portfolio of patents and applications directed to footwear incorporating knitting technologies.
Donating his time pro bono, filed applications and obtained patents for solo inventors—for example, directed to an improved face mask protecting against coronavirus and other airborne diseases—and represented clients in multiple fair housing and eviction disputes.

Jacob’s practice covers a wide range of innovations including medical devices, household appliances, automobile navigation and entertainment systems, articles of footwear, manufacturing and packaging, office furniture, and exercise equipment, among others. A mechanical engineer by training, Jacob takes a practical, hands-on approach to client counseling, often working directly with inventors to devise patent protection, enforcement, and avoidance strategies, with respect to both utility and design patents.

As a litigator, Jacob has been involved in all phases of trial preparation and motion practice for patent, trade secret, and copyright cases. He has also prepared and defended against petitions for inter partes review of patents before the United States Patent Office. As a prosecutor, he has devised and implemented strategies to develop patent portfolios in the United States and internationally. He regularly drafts utility and design patent applications, as well as infringement, clearance, and patentability opinions.

Jacob communicates frequently and clearly with clients to gain an understanding of their ultimate business goals. Thinking forward, he focuses on the tactics and strategies that lead most directly to those objectives, ensuring that client investment justifies the possible outcome.

Prior to joining Crowell & Moring, Jacob was a shareholder at Brinks Gilson & Lione.

Select Representative Matters

Represented Trudell Medical International in assertion and defense of patents relating to respiratory treatment devices.
Represented medical device leader Cook in a number of cases, including defense of a patent infringement suit filed by Boston Scientific involving gastrointestinal stent technology; and assertion of patent infringement against Endologix involving endovascular stent technology.
Represented Progressive Casualty Insurance in high-stakes infringement litigation to protect its revolutionary Progressive Snapshot motor-vehicle monitoring technology.
In a 16-day arbitration trial, helped Amway win an award of more than $25 million for misappropriation of trade secrets, breach of contract, and tortious interference—an award subsequently confirmed in district court.
Using novel defenses unique to the Internet and social media, defended Amway against copyright infringement claims in connection with videos posted to Websites such as YouTube and Vimeo.
On the prosecution side, secured and expanding a portfolio of patents for a medical device technology and product line that provides OPEP therapy to treat lung disease, aid lung hygiene, and enhance lung performance.
Assisted a leading manufacturer of footwear expand an international portfolio of patents and applications directed to footwear incorporating knitting technologies.
Donating his time pro bono, filed applications and obtained patents for solo inventors—for example, directed to an improved face mask protecting against coronavirus and other airborne diseases—and represented clients in multiple fair housing and eviction disputes.

Career & Education

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U.S. District Court for the Northern District of Illinois
Judicial Extern for Judge Ronald A. Guzmán, 2006
- U.S. District Court for the Northern District of Illinois
  Judicial Extern for Judge Ronald A. Guzmán, 2006
Honeywell International
Engineering Intern, Summer 2004

Baxter Healthcare
Engineering Intern, Summer 2003
- Honeywell International
  Engineering Intern, Summer 2004
- Baxter Healthcare
  Engineering Intern, Summer 2003
University of Illinois, B.S., with honors, mechanical engineering, 2004
University of Illinois Chicago School of Law, J.D., cum laude, 2007
- University of Illinois, B.S., with honors, mechanical engineering, 2004
- University of Illinois Chicago School of Law, J.D., cum laude, 2007
Illinois
U.S. Patent and Trademark Office (USPTO)
U.S. District Court for the Northern District of Illinois
- Illinois
- U.S. Patent and Trademark Office (USPTO)
- U.S. District Court for the Northern District of Illinois
Professional Activities and Memberships

American Bar Association

Chicago Bar Association

American Intellectual Property Law Association

Intellectual Property Law Association of Chicago

Rotary International
Professional Activities and Memberships
- American Bar Association
- Chicago Bar Association
- American Intellectual Property Law Association
- Intellectual Property Law Association of Chicago
- Rotary International

Representative Matters

Anova Applied Electronics, Inc. v. Instant Brands, Inc. (D. Mass. 2019–2020). Defended Instant Brands in a patent infringement suit concerning sous vide immersion circulator cookers.
Trudell Medical International v. D R Burton Healthcare LLC (E.D.N.C. 2018–Present). Representing Trudell Medical in assertion of patents relating to respiratory treatment devices.
Monaghan Medical Corp. v. Smiths Medical ASD, Inc. (D. Del. 2017–2018). Defended Monaghan Medical in a patent infringement suit concerning respiratory treatment devices.
Amway Corp. et al. v. UMG Recordings, Inc. et al. (M.D. Fla. 2014–2017). Represented Amway entities in a breach of contract and copyright infringement action involving user–generated videos with music uploaded to social media websites.
Boston Scientific Corp., et al. v. Cook, Inc., et al. (D. Mass. 2010–2017). Defended Cook entities in a patent infringement suit filed by Boston Scientific concerning gastrointestinal stents.
Progressive Casualty Ins. Co. v. Safeco Ins. Co. of Illinois et al. (N.D. Ohio 2010–2012). Represented Progressive Casualty Ins. Co. in a patent infringement suit involving motor vehicle monitoring systems.
Cook, Inc. v. Endologix, Inc. (S.D. Ind. 2009–2012). Represented Cook in a patent infringement suit involving endovascular stent technology.
Robert Bosch LLC v. Old World Industries, Inc. (N.D. Ill. 2010). Defended Old World Industries in a patent infringement action involving automobile wiper blades.
Quixtar, Inc. v. Signature Management Team, et al. (D. Nev. 2007–2010). Represented Quixtar in an action relating to misappropriation of trade secrets, breach of contract, and tortious interference.
Quixtar, Inc. v. Woodward, et al. (JAMS Arbitration 2007–2010). Represented Quixtar in an action relating to misappropriation of trade secrets, breach of contract, and tortious interference. After a 16–day trial, an arbitrator awarded Quixtar over $25 million. A district court subsequently confirmed the arbitrator’s decision.

Recognition

Law Bulletin Publishing Company: Emerging Intellectual Property Lawyer, Leading Lawyers Network
The John Marshall Law School, Intellectual Property Law Certificate
The John Marshall Law School Review of Intellectual Property Law: Executive Board Member. 2006-2007
Mechanical Engineering Honor Society, Pi Tau Sigma