Paul B. Henkelmann
"I enjoy the challenge of effectively understanding a client’s technology and business objectives and applying the law to get a good result."

Paul B. HenkelmannPartner

Chicago
120 South LaSalle Street
Suite 1600
Chicago, IL 60603VCard
312.577.7000 
312.577.7007 fax
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Education

J.D., Chicago-Kent College of Law, 2007, with Honors
B.S., General Engineering (Minor in German), University of Illinois at Urbana-Champaign, 2002

Services

Technical Areas

Bar & Court Admissions

IllinoisU.S. Patent and Trademark OfficeU.S. Court of Appeals for the Federal CircuitU.S. District Court for the Northern District of IllinoisU.S. District Court for the Eastern District of Michigan

Paul B. Henkelmann focuses his practice on patent litigation, patent procurement, patent post-issuance proceedings, and intellectual property counseling. He has substantial experience in both asserting and defending against patent and trademark infringement claims in the federal courts, while remaining active in procuring and managing international IP portfolios. Paul has experience in a wide variety of industries, including the following:

  • Medical devices
  • Surgical tools
  • Industrial tools and machinery
  • Automotive transmissions
  • Automotive restraint systems
  • Automotive roof systems
  • Athletic equipment
  • Sporting goods
  • Sports medicine
  • Performance apparel
  • Footwear
  • Educational tools
  • Printing equipment
  • Performance golf products
  • Hand and power tools
  • Packaging
  • Consumer products
  • Pump control systems
  • Electric fans
  • Digital rights management 


Clients benefit from Paul’s broad technical background and experience. Prior to joining Fitch Even, he was a project engineer for an original equipment manufacturer in the printing industry. There he was responsible for designing, developing, and testing a diverse line of automated process control equipment.

As an undergraduate at the University of Illinois, Paul’s studies focused on mechanical and electrical engineering, controls, and programming. He was awarded a one-year grant to study mechanical engineering at the Technische Universität München in Munich, Germany.

Paul is conversationally fluent in German.



Google Inc. and Apple Inc. v. ContentGuard Holdings, Inc. (PTAB 2015). Integral member of team representing ContentGuard in 35 IPR and CBM proceedings filed against its digital rights management patent portfolio. Five proceedings dismissed voluntarily. After submission of patent owner preliminary responses, obtained PTAB decisions denying institution of trial in all but one remaining proceeding.

TK Holdings Inc. v. CTS Corporation and CTS Automotive Products (E.D. Mich. 2008-14). Member of litigation team defending claims of infringement under patents relating to automotive seat weight sensors. Obtained summary judgment rulings that our client’s sensors do not infringe and that the asserted patents are invalid for multiple reasons.

McDavid Knee Guard, Inc. et al. v. Adidas Sales, Inc. (N.D. Ill. 2009). Member of litigation team representing plaintiff in a patent infringement action related to protective apparel. Settlement reached.

McDavid Knee Guard, Inc. et al. v. Nike USA, Inc. (N.D. Ill. 2008-14). Member of litigation team representing plaintiff in a patent infringement action related to protective apparel. Settlement reached.

Presentations

  • Inter Partes Review Tips and Considerations for Practitioners,” Fitch, Even, Tabin & Flannery, Washington, D.C., October 28, 2015.
  • "Joint Infringement and Indefiniteness After Limelight and Nautilus," Fitch, Even, Tabin & Flannery Webinar, with Eric L. Broxterman, June 26, 2014.
  • "Patent Law Primer Post-AIA: Do We Still Need to Keep Lab Notebooks?," Fitch, Even, Tabin & Flannery Webinar, November 21, 2013.
  • "Practical Considerations for U.S. Patent Practice After the America Invents Act," Grünecker, Kinkeldey, Stockmair & Schwanhäusser, Munich, Germany, October 8, 2013.
  • "How Far Do You Have to Look Under the Rock? To What Extent Is There a Duty to Investigate Potentially Invalidating Prior Art?," with Karl R. Fink and Joseph F. Marinelli, AIPLA 2009 Annual Meeting, Washington, D.C., October 15, 2009.
  • American Bar Association
  • Intellectual Property Law Association of Chicago
    • Delegate to the U.S. BarEPO Council
    • Field Day Co-Chair

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