Karl R. FinkPartner

Karl R. Fink has been a partner in the firm since 1995. His practice includes all aspects of intellectual property litigation, creation, management, enforcement and licensing, with particular emphasis on patent litigation. Karl has been a full-time first-chair trial lawyer since 1981, handling hundreds of lawsuits in state and federal courts across the country, both at trial and on appeal. He represents numerous public and privately held companies, ranging in size from start-ups to Fortune 100 companies.

Clients have sought Karl’s counsel in a wide variety of intellectual property, commercial, and tort litigations. He has served as lead trial counsel for patent, trademark, unfair competition, copyright, and trade secret actions and has handled patent infringement actions, both on the plaintiff's side and the defendant's side.

Karl has litigated complex cases involving an extensive range of technologies, products, industries, and issues. These include the following:

Karl has played a leading role in numerous successful patent enforcement and licensing campaigns on behalf of the firm's clients. Clients also rely on Karl for advice regarding infringement, validity and patentability opinions, IP valuation, joint ventures, IP licensing, and other related business decisions.

Karl previously served as the Fitch Even’s Managing Partner and is currently on the firm's Executive, Finance, Hiring, and Diversity committees.

Faculty Positions:

• Adjunct Professor, University of Illinois College of Law, Patent Defenses Course
• Lecturer, University of Michigan Law School, Advanced Patent Law Seminar
• Lecturer, DePaul University College of Law, Advanced Copyright Seminar
• Lecturer, John Marshall Center for Intellectual Property Law, annual Intellectual Property Law Conference

Publication:

• "Value Added Litigation," in Business Power: Creating New Wealth from IP Assets. Ed. R. Shearer. (Hoboken, N.J.: Wiley, 2007).

Presentations:

• Presentation to the Society of Hispanic Professional Engineers at Northwestern University in Evanston, Illinois, focusing on the practice of law, the role of lawyers in society, and our system of justice, on behalf of the Institute for Inclusion in the Legal Profession, November 2011 (with Joseph Shipley).
• "How Far Do You Have to Look Under the Rock (to Find Invalidating Prior Art)?" AIPLA 2009 Annual Meeting, Washington, D.C., Oct. 15, 2009.

Chamberlain and Johnson Controls v. Lear (N.D. Ill. 2011). Represented Chamberlain in a patent infringement action involving a rolling code encryption system for use with garage door openers. Confidential settlement reached on courthouse steps immediately before trial with Judge Posner.

Desa and Heathco v. EML and Costco (M.D. Tenn. 2009). Represented plaintiffs in patent infringe action involving light fixtures. Confidential settlement reached immediately before trial after granting of summary judgment on inequitable conduct claim.

Vermeer v. Deere (D. Del. 2005). Represented Deere in a declaratory judgment action brought by Vermeer regarding patent on baler. Settlement reached. Vermeer sought a declaratory judgment of non-infringement of a patent covering an improvement to a round baler. The court dismissed the action after Deere moved for dismissal because of the lack of a justiciable controversy.

Microchip v. Chamberlain (Fed. Cir. 2006) (declaratory judgment patent). Represented Chamberlain in a declaratory judgment action brought by Microchip Technology Corporation. Microchip sought a declaration that it was licensed under Chamberlain's learning receiver patents covering Chamberlain's remote-control garage door openers. Chamberlain moved to dismiss for lack of a justiciable controversy because Microchip and Chamberlain had previously settled an earlier litigation wherein Microchip received a covenant not to sue under Chamberlain's patents. After a period of discovery, the district court entered summary judgment in favor of Microchip, but Chamberlain successfully appealed and obtained reversal. The Court of Appeals for the Federal Circuit granted Chamberlain's request to have the entire action dismissed. On remand, the district court awarded over $185,000 in attorneys’ fees to Chamberlain.

Personeta v. Persona (N.D. Ill. 2005) (trademark, preliminary injunction entered). Represented Personeta in a trademark infringement action against Persona. After discovery and a hearing, the district court entered a preliminary injunction against Persona. Thereafter, Persona changed the name of its company.

Bacus v. Aperio (N.D. Ill. 2005) (software patent, antitrust, unfair competition). Represented Bacus Laboratories in a patent infringement action against Aperio. The patent covered a digital microscopy system useful for digital imaging, storage, and viewing of pathology slides locally and over the Internet. After a period of discovery and a Markman hearing, the court entered a favorable claim construction ruling. Thereafter, Aperio took a license under Bacus's patents.

Boltin v. Genender (Cir. Ct. Cook Cty. 2002) (trade secret). Represented Genender in a trade secret theft action brought by Boltin. After discovery and hearing, the court entered summary judgment in favor of Genender, finding that Genender had independently developed its accused, very popular fob watch design.

Chamberlain v. MVP (W.D. Mo. 1999) (patent, preliminary injunction entered). Represented Chamberlain in a patent infringement action against MVP. The patent covered a design of a car waxer. After an evidentiary hearing, the court entered a preliminary injunction enjoining MVP from further manufacture or sale of the accused car waxer.

Coilcraft v. Inductor Warehouse (N.D. Ill. 2008) (trademark infringement). Represented Coilcraft in this trademark infringement action against Inductor Warehouse, a seller of secondhand, surplus Coilcraft inductors. After discovery, Inductor Warehouse settled on the courthouse steps agreeing to a consent judgment.

• American Bar Association
• Center for Intellectual Property Law and Information Technology (CIPLIT), DePaul University, Board Member
  • Board Member
• Chicago Bar Association
• Chicago Lincoln American Inn of Court
  • Past President and Program Chair
• Illinois State Bar Association
• National Knowledge and Intellectual Property Management Taskforce