Joseph E. ShipleyPartner

With over 20 years of top-level IP experience, Joseph E. Shipley has earned a highly regarded reputation for handling complex patent-related needs worldwide, assisting clients with freedom-to-operate opinions, preparation and prosecution of patent applications, licensing and other transactions, global IP strategies, portfolio management, and litigation.

His clients primarily comprise consumer products companies in the food and beverage and health care sectors, as well as clients in the software, construction, and railcar industries. They range from small privately held businesses to large publicly traded global corporations, including two companies recently recognized by Forbes as among the most reputable large corporations in the United States.

Joe has extensive experience with due diligence in connection with product development, including the interplay between various forms of IP protection and the functional and aesthetic aspects of consumer products and their packaging. He also often works on the management of large global patent portfolios, including optimization of international patent strategies.

Joe has been a leader in the IP professional community for many years. He is an adjunct professor at the University of Illinois, has served on the faculty of the Practicing Law Institute, has spoken at Northwestern University School of Law, and has lectured at DePaul University College of Law. In addition, he is a member of Fitch Even’s Executive Committee as well as the firm’s Employment and Marketing Committees.

CompuSpace L.C. v. IDC Solutions Pty. Ltd. (E.D. Mo. 2012). Represented defendant IDC Solutions in patent infringement action; complaint dismissed.

Amity Leather Products v. RGA Accessories (S.D.N.Y. 1994; aff'd in unpublished opinion, 2d Cir. 1994). Obtained injunction and award of profits on behalf of Amity in contempt proceeding.

Shat-R-Shield v. Trojan, Inc. (E.D. Ky. 1991; aff'd in part, vacated in part, in unpublished opinion, 968 F.2d 1226, reported in full at 1992 U.S. App. LEXIS 9860, Fed. Cir. 1992, cert. denied, S.Ct. 2011992). Successful representation of patent infringement defendant Trojan in bench trial.

Oran L. Strouss v. Kraft Foods, Inc. (C.D. Cal. 1987; aff'd without opinion, Fed. Cir. 1987). Successful defense of Kraft Foods against alleged patent infringement in a jury trial.

Sterling Drug, Inc. v. Intermedics, Inc., pretrial ruling reported at 3 USPQ.2d 1467 (N.D. Tex. 1987; aff'd in unpublished opinion 852 F.2d 1293, Fed. Cir. 1988). Successful defense of Intermedics in a jury trial involving patent, trade secret, and trademark claims.

Daniel G. Baughman et al. v. Buckles of America (E.D. Cal. 1997). Defense of Buckles of America in patent infringement action.

Elesa S.p.A. v. Plum Sales, Ltd. (N.D. Ill. 1997). Represented plaintiff Elesa S.p.A. in trade dress case against Plum Sales. Consent judgment and permanent injunction.

Marketing Displays, Inc. v. Dicke Tool Company et al. (E.D. Mich. 1994) Represented Dicke Tool Company in defense of action for infringement of five utility patents, and in related declaratory judgment action, Dicke Tool Co. v. Marketing Displays, Inc. (N.D. Ill. 1994).

Amity Leather Products Company v. Dallas Handbag Company et al. (S.D.N.Y. 1994) Represented plaintiff Amity Leather Products Company in action for design patent infringement against Dallas Handbag Company, Inc., RGA Accessories, Inc., B.H. Smith, Inc., and Michael Stevens, Ltd., and in related trade dress declaratory judgment action, Michael Stevens, Ltd. et al. v. Amity Leather Products Company (S.D.N.Y. 1993).

• “Patent Reexaminations in Parallel with Litigation,” Fitch, Even, Tabin & Flannery Webinar, February 22, 2012.
• Participated in a number of presentations to diverse students on behalf of the Institute for Inclusion in the Legal Profession in its work to increase the number of diverse individuals entering the legal profession. Presentations took place at Northwestern University in Evanston, Ill.; Chicago Bulls College Prep in Chicago; the Better Boys Foundation in the Lawndale neighborhood of Chicago; Cristo Rey High School in the Pilsen neighborhood; the Apostolic Whole Truth Church in the Englewood neighborhood; Berkeley College in New York City; Allegheny College in Meadville, Penn.; and the University of Illinois at Champaign-Urbana. (October - December 2011)
• “Parallel Patent Reexaminations,” Practising Law Institute, Chicago, October 13, 2011.
• “Advanced Patent Licensing,” Practising Law Institute, New York, May 28, 2008.
• “Ramifications of KSR v Teleflex,” Northwestern University School of Law, Chicago, January 18, 2008 (Panelist).
• “Handling Intellectual Property Issues in Business Transactions,” Practising Law Institute, Chicago, 2004.
• “Protection of Product Configuration & Design,” Chicago Bar Association, March 3, 1998.

• American Intellectual Property Law Association
• Intellectual Property Law Association of Chicago
  • President, 2008-09