Timothy P. MaloneyPartner

Timothy P. Maloney is the Managing Partner of Fitch, Even, Tabin & Flannery LLP.

Tim’s practice entails all aspects of intellectual property enforcement and defense, with an emphasis on representing plaintiffs in patent litigation and licensing. Tim has achieved a strong record of courtroom success and is established as an effective trial lawyer and negotiator against top lawyers from the nation’s largest law firms. Although his primary focus is patent litigation, he has also successfully litigated disputes regarding trade secret, antitrust, trademark, unfair competition, and professional malpractice matters.

Tim has developed particular expertise in multi-party, multi-forum, complex patent litigation. In addition, he handles appeals and has successfully argued several cases before the U.S. Court of Appeals for the Federal Circuit and for the Ninth Circuit.

Tim has a keen interest and deep experience in IP monetization strategies and programs. He has been instrumental in the firm’s contingent fee litigation and technology licensing practice, which has helped numerous smaller businesses and entrepreneurs to enforce and monetize their IP rights, collecting substantial verdicts, settlements, license revenue, and portfolio sale proceeds on their behalf.

Clients seek Tim’s counsel for sophisticated IP-based business transactions. He has been engaged as lead IP counsel in connection with merger and asset purchase agreements, joint ventures agreements, technology licenses, and other transactions. He also supports the IP risk management objectives of several companies by managing product clearance studies, issuing legal opinions, and providing guidance in the design-around process.

Outside the Box v. Travel Caddy (Fed. Cir. 2012). Lead counsel representing patent owner in appeal from district court judgment of partial infringement, invalidity, and unenforceability of patents directed to tool carrying bags. After assuming representation from another firm, obtained reversal of both grounds of inequitable conduct, vacator of invalidity ruling, and affirmance of infringement ruling as to one product.

Software Restore Solutions, LLC v. Apple, Inc., et al. (N.D. Ill. 2010-11). Lead counsel asserting claims of infringement against more than 20 software application vendors under patent relating to automated application configuration fault detection and repair. Successfully licensed all defendants generating substantial royalty income.

totes Isotoner Corporation v. Panther Vision, LLC (N.D. Ill. 2009-10). Lead counsel defending claims of patent infringement under patent relating to LED lighted baseball caps. Obtained narrow interpretation of key claim limitations resulting in clear non-infringement defense, which led to favorable non-monetary settlement.

Cheah IP, LLC Portfolio Monetization Project (2009-12). Led litigation and licensing program under patents directed to automated profile exchange technology for social networking website. Obtained substantial litigation settlement; strengthened portfolio through continuation practice in USPTO; brokered portfolio sale to leading social networking company.

Alexsam, Inc. v. NetSpend Corporation (Travis County Dist. Ct., Tex. 2007-12). Trial counsel in jury trial of claims for breach of license agreement under patents relating to systems for activating stored value cards at the retail point-of-sale. Obtained $18 million jury verdict resulting in $24 million settlement.

Alexsam, Inc. v. IDT Corporation (E.D. Tex. 2007-11). Trial counsel in jury trial asserting claims of infringement under patents relating to systems for activating stored value cards at the point of sale. Obtained jury verdict resulting in plaintiff’s judgment of $10.1 million, with potential for recovery of future royalties.

Alexsam, Inc. v. UnitedHealth Group Incorporated, United Health Care Services, Inc., Exante Bank, Inc. and Exante Financial Services, Inc. (E.D. Tex. 2007-11). Trial counsel asserting claims of infringement under patents relating to systems for conducting transactions for managing medical savings account cards. Obtained substantial settlement on the eve of jury selection.

Pioneer Laboratories, d/b/a Pioneer Surgical Technology v. Stryker Corporation et al. (W.D. Mich. 2005; Fed. Cir. 2006). Lead counsel pursuing declaratory judgment of non-infringement and invalidity of patent relating to pedicle screw rodding system for spine stabilization, and defended counterclaims of infringement. Obtained narrow patent claim construction and summary judgment ruling of non-infringement. Authored briefs on appeal to the Federal Circuit, resulting in judgment affirming the trial court’s ruling.

Sunny Fresh Foods, Inc. v. Michael Foods, Inc. (D. Minn. 2000-03; Fed. Cir. 2005). Member of trial team defending Cargill’s Sunny Fresh Foods Division against claims of infringement of patents relating to high temperature pasteurization of refrigerated liquid egg products. After six-week jury trial, obtained verdict of non-infringement in favor of Sunny Fresh, avoiding potential nine-figure damages exposure. Co-authored briefs on appeal to the Federal Circuit, resulting in judgment affirming the verdict.

Harvest Technologies Corporation v. Cytomedix, Inc. (D. Mass. 2002-05). Trial counsel pursuing claim of infringement against Harvest under patent directed to cellular-based wound treatment technology. Handled Markman and summary judgment proceedings resulting in favorable claim construction and award of summary judgment of infringement. Obtained favorable rulings during second week of jury trial, leading to substantial settlement prior to submission of case to the jury.

webMethods, Inc. v. iWork Software LLC (E.D. Va., Fed. Cir. 2002-03; Fed. Cir. 2004). Defended declaratory judgment action brought by software vendor seeking ruling of non-infringement and invalidity of patent relating to software application integration. Pursued claims of infringement against numerous end-users. Obtained order dismissing software vendor with prejudice for lack of jurisdiction. Argued on appeal to the Federal Circuit, resulting in judgment affirming the trial court’s ruling. Licensed numerous software vendors and end-users, generating substantial royalties.

• “Patent Enforcement in the U.S. Food Industry,” Food Process Innovations Conference, Helsinki, Finland, May 15, 2009.
• “Opinions of Counsel In Light of Broadcom v. Qualcomm,” Fitch, Even, Tabin & Flannery Webinar, April 23, 2009.
• “Important Trends in Obtaining and Enforcing U.S. Patent Rights,” Japanese Group of the AIPPI, Tokyo, Japan, March 3, 2009.
• “Update on U.S. Patent System,” TAP Pharmaceutical, Lake Forest, Illinois, December 7, 2007.
• “Markman Claim Construction Proceedings,” Kraft Foods, Inc., Northfield, Illinois, September 29, 2004.
• "Preparing Patents with an Eye Toward the Courtroom,” Xerox Corporation, Rochester, New York, June 18, 2001.
• “Patent Litigation in the United States,” UPM-Kymmene Corporation, Valkaekoski, Finland, February 10, 2000.
• “Drafting Claims for Winning at Trial,” Hoffman, Eitle & Partner, Munich, Germany, November 11, 1999.
• “The Enforcement of Patent Rights in the United States,” in Patent Enforcement Worldwide – A Survey of 15 Countries, 2nd Ed. Eds. C. Heath and L. Petit. (Portland: Hart, 2005).
• Maloney, T.P., Kaba, R.A., Krueger, J.P., Kratz, R., and Mitchell, C.J., “Intellectual Property in Drug Discovery and Biotechnology,” in Burger’s Medicinal Chemistry and Drug Discovery, 6th Ed. Eds. D. J. Abraham and D. P. Rotella. (Hoboken, N.J.: Wiley, 2003).
• “The Enforcement of Patent Rights in the United States,” in Patent Enforcement in Selected Countries. (Max Planck Institute for Foreign and International Patent, Copyright and Competition Law: 2000) (published in four languages).

• American Institute of Chemical Engineers 
• Chicago Lawyers Club
• Federal Circuit Bar Association 
• International Association for the Protection of Industrial Property
• Intellectual Property Law Association of Chicago 
• Licensing Executives Society 
• Northern District of Illinois Trial Bar