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Robert S. Mallin

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Areas of Focus

Overview

As a patent litigator, Robert S. Mallin uses his experience as litigation strategist and first-chair trial attorney to maximize his clients’ returns in patent and trademark disputes. Having significant exposure to both traditional patent litigation in federal courts and in post-grant Inter Partes Review (IPR) proceedings at the United States Patent and Trademark Office, Robert counsels clients on where and how to most effectively litigate patent invalidity claims. Where appropriate, Robert has successfully used the IPR process to invalidate patents asserted against his clients or to stay ongoing litigation, avoiding lengthier and more costly court proceedings.

Robert has vast experience in all phases of litigation—including preliminary injunctions, Markman hearings, and jury trials—as well as in proceedings before the International Trade Commission, in IPR proceedings, and in other post-grant review proceedings before the Patent Trial and Appeal Board. Over his career, he has appeared in more than 75 cases in more than 20 different courts and other forums, including the ITC and PTAB. Alongside his successful litigation practice, Robert advises clients on licensing, patentability, and validity issues, as well as patent prosecution. Robert also has experience as a process engineer for a food manufacturing company where he worked with equipment used in a manufacturing environment for processing, packaging, quality control, and material handling and transportation. Throughout all of his work, he places an emphasis on anticipating issues and helping clients to think forward for long-term strength and effectiveness.

Robert has represented major clients in the in vitro diagnostics, bakery product manufacturing, automotive, telecommunications, tobacco processing, electronic and smokeless tobacco devices, and trading platform software products areas. He has counseled clients in a variety of other technical areas including electromechanical inventions, mechanical inventions, chemical processing and chemical engineering, medical devices, computer chips, metallurgical processing and biotechnology.

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

Career & Education

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    • Frito Lay
      Project Engineer, 1985–1987
    • Frito Lay
      Project Engineer, 1985–1987

    • University of Illinois, B.S., chemical engineering, 1985
    • Loyola University of Chicago Law School, J.D., 1990
    • University of Illinois, B.S., chemical engineering, 1985
    • Loyola University of Chicago Law School, J.D., 1990

    • Illinois
    • U.S. Patent and Trademark Office (USPTO)
    • U.S. District Court for the Western District of Texas
    • U.S. District Court for the Western District of Michigan
    • U.S. District Court for the District of Illinois, Trial Bar
    • U.S. District Court for the Eastern District of Wisconsin
    • U.S. Court of Appeals for the Federal Circuit
    • Supreme Court of Illinois
    • Illinois
    • U.S. Patent and Trademark Office (USPTO)
    • U.S. District Court for the Western District of Texas
    • U.S. District Court for the Western District of Michigan
    • U.S. District Court for the District of Illinois, Trial Bar
    • U.S. District Court for the Eastern District of Wisconsin
    • U.S. Court of Appeals for the Federal Circuit
    • Supreme Court of Illinois

Representative Matters

  • Representing Sysmex Corporation and Sysmex America, Inc. in patent litigation as a plaintiff in the District Court of Delaware and as a defendant in the Northern District of Illinois.
  • Represented R.J. Reynolds in patent litigation and IPR proceedings involving electronic cigarettes.
  • Represented Interactive Data Corporation and obtained summary judgment of noninfringement in an infringement action in federal district court involving a patent related to the processing of financial data.
  • Represented Kia Motors, Hyundai and 11 dealerships throughout the US in multi-forum dispute based on sales of vehicles with keyless ignition. Under Robert’s guidance, cases brought in 10 different district courts were consolidated and dismissed pending IPR proceedings relating to patent invalidity and bankruptcy proceedings relating to patent ownership. The patent was subsequently invalidated in the IPR proceeding and found not to be owned by the plaintiff in the Bankruptcy proceeding.
  • Represented plaintiff in patent litigation concerning equipment and processing methods for manufacturing corn-based crunchy snacks and included study of baking equipment and related processing.
  • Involved in trademark litigation concerning covered packaging and product configuration.
  • Handled opinions and counseling for food manufacturer.

District Court Litigation

  • Kawasaki heavy Industries v. Rorze Corporation and Rorze Automation, Inc. (N.D. Cal). Case pending.  Representing Kawasaki in patent infringement lawsuit relating to semiconductor manufacturing robots.
  • Sysmex America Inc and Sysmex Corporation v. Beckman Coulter Inc  (D. Del.). Case settled right before trial. Represented Sysmex in patent infringement lawsuit relating to sample analyzer having a blood measuring mode and a body fluid measuring mode.
  • Beckman Coulter Inc. v. Sysmex America Inc and Sysmex Corporation (N.D. Ill.). Case settled right before trial of co-pending lawsuit. Represented Sysmex in patent infringement lawsuit relating to an object-based architecture for an integrated clinical laboratory system.
  • Fontem. v. R.J. Reynolds Vapor Company (M.D.N.C.). Cased settled. Represented Reynolds in patent infringement litigation and multiple related IPR proceedings. (2017–2018).
  • Quest Licensing Corp. v. Interactive Data Corporation (D. Del.). Case dismissed on summary judgment of noninfringement. Plaintiff alleged infringement relating to technology for providing information to mobile telecommunications users. (2014–2017).
  • Kia Motors America, Inc. and Kia Motors Corporation v. Peter F. Wingard (N.D. Ill.). Case dismissed pending IPR and bankruptcy proceeding relating to patent ownership. Kia sought a declaratory judgment of noninfringement of patent asserted against Kia vehicles. The patent was invalidated in the IPR proceeding and the Bankruptcy court determined that the plaintiff did not own the asserted patent. (2014–2015).
  • Peter F. Wingard and Netlatch LLC v. Hyundai Motor America and Orr Hyundai of Texarkana (E.D. Tx.). Case dismissed pending IPR and bankruptcy proceeding relating to patent ownership. Plaintiff alleged infringement based on sales of Hyundai vehicles having keyless ignition. (2014–2015).
  • Peter F. Wingard v. Various Kia Dealerships Throughout the U.S. (10 different district courts). Cases dismissed pending IPR and bankruptcy proceeding relating to patent ownership. Plaintiff alleged infringement against 11 different Kia dealerships in ten different district courts (E.D. Tx., S.D. Tx., N.D. Tx., N.D. Ill., C.D. Cal., W.D. Wisc., D. Del., M.D. Fla. D. N.J., and E.D. Va.) based on sales of Kia vehicles having keyless ignition. (2014–2015).
  • Patriot Scientific Corporation, Phoenix Digital Solution LLC, Technology Property Limited LLC v. ZTE Corporation and ZTE (USA) Inc. (N.D. Cal). Represented defendants against claims of alleged infringement of three patents related to microprocessor technology.
  • Grupo Bimbo v. Snak King (C.D. Cal.). Case Settled. Asserted trademark and patent rights relating to rolled tortillas. (2013–2015).
  • Ronald D. Russo v. Wilson-Cook Medical, Inc. (M.D. Fla.) Case settled. Represented defendant/counter-plaintiff in alleged breach of contract action. (2013–2014).
  • Draeger Medical Systems, Inc. v. Atom Medical International, Inc. et. al. (M.D. Fla.). Case Settled. Technology related to infant incubators and warmers. (2013–2014).
  • Markets-Alert Pty, Ltd. v. eSignal.com et al. (D. Del.). Case dismissed after patent determined to be invalid in related CBMR.
  • Twin Star International, Inc. et al v. Whalen Furniture Manufacturing Inc. (S.D. Cal.). Case settled.
  • InvestPic LLC v. StatPro Inc. (D. Del.). Case dismissed in client’s favor before discovery. Technology related to trading software. (2011–2012).
  • GHJ Holdings, LLC v. Plasticade Products Corp. (E.D. Tx.). NPE false marking case dismissed after new marking statute under AIA announced and implemented. (2010–2011).
  • GHJ Holdings, LLC v. ConvaTec Inc. (E.D. Tx.). NPE false marking case settled after complaint dismissed for failing to meet the pleading requirements of Fed. R. Civ. P. 9(b). (2010–2011).
  • Hollister Incorporated v. ConvaTec Inc. (N.D. Ill.). Hollister patent infringement claim dismissed on summary judgment. ConvaTec’s counterclaims for false marking and false advertising were settled. Technology related to bowel management medical device for critical care patients, and the claims and advertising regarding those devices. (2010–2013).
  • Encore Rail Systems, Inc. v. The Willamette Valley Company (N.D. Ill.). Case settled during discovery. Technology related to chemistry involved with new railroad spike repair material to prevent railroad misalignment and derailing. (2010–2011).
  • Unomedical A/S v. Smiths Medical MD, Inc. (N.D. Ill.). Case settled after original opposing counsel withdrew while motion to disqualify for client conflict was pending. Technology related to a disposable needle for use with insulin infusion pumps. (2009–2011).
  • Kannar v. Alticor Inc.; Amway Corp.; and Access Business Group LLC (C.D. Cal.). Case settled during expert discovery. Technology related to chemistry involved with nutraceutical garlic tablet formulation and processing. (2008–2010).
  • Yakima Products, Inc. v. Saris Cycling Group, Inc. (D. Or.). Case settled. Technology related to multiple patents for various bicycle rack designs. (2008–2009).
  • Star Scientific, Inc. v. R.J. Reynolds Tobacco Company (D. Md.). Obtained a jury verdict of noninfringement after a 5-week trial. Noninfringement verdict was affirmed on appeal. Technology related to alleged method for lowering the nitrosamine level in tobacco. (2008–2011).
  • Energizer Holdings, Inc. and Eveready Battery Company, Inc. v. Spectrum Brands, Inc. (W.D. Wisc.). Case settled after client obtained a preliminary injunction. Technology related to lithium batteries. (2008–2009).
  • Arimathea LLC v. Wm. Wrigley Jr. Company et al. (N.D. Ill.). Case resolved during settlement conference with Magistrate Judge. Technology related to design for tin containers. (2008–2009).
  • Techtronic Industries Co., Ltd and Richard Pando v. Chervon Holdings Ltd; Nanjing Chervon Industrial Co. Ltd; Chervon Ltd; Chervon North America, Ind. (N.D. Ill.). Case settled after clients obtained a preliminary injunction. Technology related to wall-mounted laser level. (2006–2007).
  • One World Technologies, Inc. and Ryobi Technologies, Inc. v. Robert Bosch Tool Companies; Rexon Industrial Corp., Ltd.; and Power Tool Specialists, Inc. (N.D. Ill.). Case settled. Technology related to ergonomic design for miter saws. (2006–2007).
  • One World Technologies, Inc. and Ryobi Technologies, Inc. v. Rexon Industries Corp., Ltd; and Power Tool Specialists, Inc. (N.D. Ill.). Case settled. Technology related to use of laser technology in conjunction with miter saws. (2006–2007).
  • Jacobs Chuck Manufacturing Company; Power Tool Holders, Inc.; and Establissments Amyot, S.A. v. Shandong Weida Machinery Co. Ltd.; One World Technologies, Inc.; and Techtronic Industries Co., Ltd. (E.D. Tx.). Case settled. Technology related to chuck design for drills. (2005–2006).
  • Black & Decker v. Ryobi Technologies and TechTronics Industries (D. Del.). Case settled. Technology involved multiple patents involving both electrical and mechanical aspects of several different power tools. (2005–2006).
  • Tilia Int’l v. The Rival Co. (N.D. Cal.). Case settled concurrently with In re Home Vacuum Packaging Machines. Technology related to vacuum packaging machines such as Foodsaver and Seal-a-Meal vacuum packaging machines. (2003–2004).
  • New Venture Gear, Inc. v. BorgWarner Inc. and BorgWarner TorqTransfer Systems, Inc. (E.D. Mich.). Case settled. Technology related to four wheel drive technology used in transfer cases supplied to automotive industry. (2001–2002).
  • BorgWarner Inc. and BorgWarner TorqTransfer Systems, Inc. v. New Venture Gear, Inc. (N.D. Ill.). Case settled. Technology related to four wheel drive technology used in transfer cases supplied to automotive industry. (2000–2002).
  • Integrated Paving Concepts, Inc. v. Nicon Enterprises and Sadi Sepassi (C.D. Cal.). Obtained jury verdict of trademark and copyright infringement, and an award of damages. Subject matter related to unauthorized trademark and copyright use on internet. (1999–2001).
  • Ameritech Corporation v. Quaterra Communications Corporation (E.D. Wisc.). Obtained default judgment. Subject matter related to Ameritech trademark rights. (1998).
  • Ryobi Outdoor Products v. American Honda Motor Company Inc., et al (D. Az.). Case settled. Technology related to four cycle engine technology. (1998–2000).
  • Ruud Lighting v. Security Lighting Systems, Inc. (E.D. Wisc.). Case settled. Technology related to light reflector patent. (1998–1999).
  • Bracey v. Brushtech (N.D. Ill.). Case dismissed after discovery of invalidating prior art reference. Technology related to brush design. (1998).
  • United Technologies v. Borg-Warner Inc. (E.D. Mich.). Case settled. Technology related to gear motor used in automotive industry. (1997–1999).
  • Illinois Tool Works v. Fori Automation (E.D. Mich.). Case settled. Technology involved vision equipment for wheel and tire mounting equipment used by the automotive industry. (1997).
  • Minnesota Manufacturing & Mining v. M/A-COM Inc. (W.D. Tx.). Case settled. Technology related to thermoplastic for electrical connectors. (1996–1997).
  • Amway Corporation v. Nartron Corporation (W.D. Mich.). Patent held invalid on summary judgment. Technology related to water treatment technology. (1993–1996).
  • Weiss v. Ruud Lighting (N.D. Ill.). Case settled. Technology related to unique lighting fixture. (1991–1992).
  • Inland Steel Company v. LTV Steel Company and USX Corporation (N.D. Ill.). The asserted patents were invalidated during reexamination after a jury trial on infringement only. Technology related to prevention of internal oxidation during processing of cold rolled lamination steel. (1991–1993).
  • Kelsey-Hayes Company v. Motor Wheel Corporation (W.D. Mich.). Case settled. Technology related to full face wheel technology utilized by the automotive industry. (1991–1992).

International Trade Commission

  • Certain Thermal Support Devices for Infants, Infant Incubators, Infant Warmers, and Components Thereof, Inv. No. 337-TA-896. Represented respondent Atom in patent infringement investigation (settled).
  • Certain Wireless Consumer Electronics Devices and Components ThereofCertain Wireless Consumer Electronics Devices and Components Thereof, Inv. No. 337-TA-853. Represented respondent ZTE in patent infringement investigation (no infringement).
  • Certain Electronic Devices for Capturing and Transmitting Images, and Components Thereof, Inv. No. 337-TA-831. Represented complainant Kodak in patent infringement investigation (settled).
  • Certain Electric Fireplaces, Components Thereof, Manuals for Same, Certain Processes for Manufacturing or Relating to Same and Certain Products Containing Same, Inv. No. 337-TA-791. Represented complainant Twin Star in trade secret and copyright investigation (settled).
  • Home Vacuum Packaging Machines, Inv. No. 337-TA-496. Represented respondent Rival in patent infringement investigation. Case settled after complainant’s request for a temporary exclusion order was denied.

Recognition

  • Leading Lawyers Network: Leading Intellectual Property Lawyer, 2014