Karl has been a partner in the firm since 1995. Karl's practice includes all aspects of intellectual property creation, management, enforcement and licensing, with particular emphasis on intellectual property 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 the Fortune 100 to closely-held companies.
Karl has handled a variety of intellectual property, commercial and tort litigations as lead trial counsel, with particular experience in patent, trademark, unfair competition, copyright, and trade secret actions. He has developed a particular expertise in patent infringement actions, both on the plaintiff's side and the defendant's side. Karl has handled cases involving a wide range of technologies, including software, remote controls, digital imaging, interactive computer interfaces, electronic signaling, encryption, digital media, graphical user interfaces, data transmission, convergence of data, sound and video transmission, mechanical controls, biotechnology, medical devices, blood processing, digital microscopy, defibrillators, farm equipment, furniture design, mineral processing, disposable diapers, electronic components, inductors, fire and smoke alarms, car waxers, wristwatches, sirens and alarms, soap dispensers, engine cooling systems, windshield wipers, printing presses, punch and brake presses, advertising literature, trademarks, and copyrights. He has played a leading role in a variety of successful patent enforcement and licensing campaigns on behalf of the firm's clients.
Karl also advises clients on infringement, validity and patentability opinions, IP valuation, joint ventures, IP licensing, and other related business decisions.
Karl serves as the firm's managing partner, and serves on the firm's Executive Committee (chair), Finance Committee, Hiring Committee and Diversity Committee. Karl is on the list of Leading Illinois Attorneys, and has been named one of the Illinois Super Lawyers since 2006 for his accomplishments in the field of intellectual property litigation. He is a member of the National Knowledge and Intellectual Property Management Taskforce, and is past president and program chairman of the Chicago Lincoln American Inn of Court.
BAR ADMISSIONS:
Supreme Court of Illinois
U.S. Supreme Court
U.S. Courts of Appeals for the Seventh Circuit and Federal Circuit
Numerous U.S. District Courts
Trial Bar, Northern District of Illinois
Numerous admissions pro hac vice around the country
EDUCATION:
University of Michigan Law School, 1981, Juris Doctor
University of Michigan Engineering College, 1978, Bachelor of Science in Engineering
Honors:
magna cum laude
RECOGNITIONS AND LISTINGS:
Listing as Illinois Leading Lawyer since 2001
Listed as Illinois Super Lawyer since 2006 in field of intellectual property litigation
FACULTY POSITIONS:
Lecturer: University of Michigan Law School, Advanced Patent Law Seminar
Lecturer: DePaul College of Law, Advanced Copyright Seminar
Lecturer: John Marshall Center for Intellectual Property Law, annual Intellectual Property Law Conference
PROFESSIONAL ASSOCIATIONS AND MEMBERSHIPS:
American Bar Association, Litigation Section
Illinois State Bar Association
Chicago Bar Association
Chicago Lincoln American Inn of Court, past President and Program Chairman
PUBLICATIONS:
Chapter: Value Added Litigation,
Creating New Wealth From IP Assets, John Wiley & Sons, Inc. (2007)
Karl R. Fink, Joseph F. Marinelli & Paul B. Henkelmann,
How Far Do You Have To Look Under The Rock? To What Extent Is There a Duty To Investigate Potentially Invalidating Prior Art?, AIPLA 2009 Annual Meeting, Washington, DC (Oct. 15, 2009),
available at www.aipla.org.
REPRESENTATIVE RECENT CASES:
Chamberlain and Johnson Controls v. Lear, No. 1:05-cv-3449 (N. D. Ill. filed June 13, 2005); U.S. Dist. LEXIS 31118, April 25, 2007 (patent, preliminary injunction entered). Karl represented Chamberlain in this action involving a patent on a rolling code encryption system for use with garage door openers. Chamberlain and Johnson Controls sued Lear for patent infringement regarding Lear's integrated garage door opener transmitter which Lear offered to automakers for installation in automobiles. After discovery and a Markman hearing, the district court entered a preliminary injunction enjoining Lear's sale of the accused garage door opener (except the court permitted ongoing deliveries on existing contracts with General Motors).
Judge: James B. Moran, Northern District of Illinois
Opposing counsel: Kimball R. Anderson, Winston & Strawn; Ernie L. Brooks, Brooks Cushman, P.C.
Vermeer v. Deere, No. 04-1343 (D. Del. filed Oct. 7, 2004); 379 F. Supp. 2d 645 (D. Del. 2005) (patent). Karl represented Deere in a declaratory judgment action brought by Vermeer. 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.
Judge: Susan L. Robinson, District of Delaware
Opposing Counsel: John R. Trembath, Merchant & Gould
Overhead Door v. Chamberlain, 194 F.3d 1261 (Fed. Cir. 1999) (software patent, antitrust). Karl represented Chamberlain in a declaratory judgment action brought by Overhead Door and Genie against Chamberlain. Chamberlain counterclaimed for infringement. After an entry of summary judgment of non-infringement by the district court, the Court of Appeals for the Federal Circuit reversed and entered a claim construction supporting Chamberlain's interpretation of the patent. Overhead Door thereafter settled on the courthouse steps taking a license under Chamberlain's patents.
Judge: Sidney A. Fitzwater, Northern District of Texas
Opposing Counsel: Kenneth R. Glaser, Akin Gump Strauss Hauer & Feld; Stephen P. Swinton, Cooley Godward, L.L.P.
Personeta v. Persona, No. 05 C 4877 (N.D. Ill. filed Aug. 24, 2005); 418 F. Supp. 2d 1013 (N. D. Ill. 2005) (trademark, preliminary injunction entered). Karl 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.
Judge: Joan B. Gottschall, Northern District of Illinois
Opposing Counsel: Robert J. Yorio, Carr & Farrell
Chamberlain v. MVP, No. 4:99-cv-01121-FJG (W. D. Mo. Nov. 22, 1999) (patent, preliminary injunction entered). No. 4:99-cv-01121-FJG (W. D. Mo. Nov. 22, 1999) (patent, preliminary injunction entered). Karl 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.
Judge: Fernando J. Gaitan, Jr., Western District of Missouri
Opposing Counsel: Jeffrey H. Kass, Lowenhaupt & Chasnoff
Boltin v. Genender, No. 99 CH 00709 (Cir. Ct. Cook Cty. filed Jan. 15, 1999) (trade secret). No. 99 CH 00709 (Cir. Ct. Cook Cty. filed Jan. 15, 1999) (trade secret). Karl 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.
Judge: Nancy J. Arnold, Circuit Court of Cook County
Opposing Counsel: George Bullwinkel, Bullwinkel Parters; Paul Levenson, Kaplan Gottbetter & Levenson
Bacus v. Aperio, No. 02-C-9073 (N. D. Ill. filed Dec. 13, 2002) (software patent, antitrust, unfair competition). Karl 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' patents.
Judge: Matthew F. Kennelly, Northern District of Illinois
Opposing Counsel: Anthony J. Dain, Procopio Cory Hargreaves & Savitch
Microchip v. Chamberlain, 441 F.3d 936 (Fed. Cir. 2006) (declaratory judgment patent). 441 F.3d 936 (Fed. Cir. 2006) (declaratory judgment patent). Karl 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.
Judge: Susan R. Bolton, District of Arizona
Opposing Counsel: Brett L. Dunkelman, Osborne Maledon
Chamberlain v. Skylink, 381 F.3d 1178 (Fed. Cir. 2004) (Digital Millennium Copyright Act). 381 F.3d 1178 (Fed. Cir. 2004) (Digital Millennium Copyright Act). Karl represented Chamberlain in this high-profile case testing the limits of the Digital Millennium Copyright Act. Chamberlain contended that Skylink's universal transmitter illegally operated a back door to Chamberlain's rolling code receiver. The district court and the Court of Appeals for the Federal Circuit disagreed. The Federal Circuit held that there was no violation of the Digital Millennium Copyright Act because there was no facilitation of copyright infringement.
Judge: Rebecca Pallmeyer, Northern District of Illinois
Opposing counsel: Andra Barmash Greene and David Nimmer, Irell & Manella
Coilcraft v. Inductor Warehouse, No. 98-C-0140 (N. D. Ill. filed Jan. 9, 1998) (trademark infringement). Karl 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.
Judge: Ronald A. Guzman, Northern District of Illinois
Opposing Counsel: James K. Borcia, Tressler Soderstrom Maloney & Priess
Keene v. Champion, No. 02-8148 TJH (CWx) (C. D. Cal. filed Oct. 22, 2002) (cleaner dispenser patent) (preliminary injunction entered). Karl represented Keene in a patent infringement action involving soap dispensers. After briefing on claim construction, the district court entered a preliminary injunction enjoining Keene from selling its soap dispensers.
Judge: Terry J. Hatter, Central District of California
Opposing Counsel: Joseph R. Donahue
Mary Kay v. Mary Kay, No. 00-C-1501 (S. D. Cal. filed July 27, 2000) (Trademark Cyberpiracy Protection Act). Karl represented Mary Kay Cosmetics in this declaratory judgment action brought against Mary Kay Toys & Carburetors seeking a declaratory judgment of no liability under the trademark laws and the federal Trademark Cyberpiracy Prevention Act. The action was dismissed and Mary Kay Cosmetics was awarded reasonable attorneys' fees.
Judge: Cynthia G. Aaron
Opposing Counsel: Antonio Ben Espinoza
Evans v. General Motors, 125 F.3d 1448 (Fed. Cir. 1997) (engine cooling patent, trade secret).
Parker v. Welch Allyn, No. 05-74295 (E.D.N.Y. filed Nov. 8, 2005) (patent).
Bacus v. MicroBrightField, No. 04 C 5493 (N. D. Ill. Aug. 20, 2004) (patent, unfair competition).
Coilcraft v. M/A Com, No. 02-5653 (N. D. Ill. filed June 11, 2002); 2005 U.S. Dist. LEXIS 11723 (N. D. Ill. 2005) (breach of contract).
Coilcraft v. Passives Direct and Primedia, No. 02-3688 (N. D. Ill. filed May 22, 2002) (trademark).
Trust Licensing v. InterActual, No. 03-20672 (S. D. Fla. filed Mar. 21, 2003) (software patent, trade secret theft).
Entry-Master v. Chamberlain, No. 02-1589 (D. Md. filed May 3, 2002) (trademark infringement).
Greenwich v. Specialized Seating, No. 02-5000 (N. D. Ill. filed July 15, 2002); 2003 U.S. Dist. LEXIS 5940 (N. D. Ill. 2003); 2003 U.S. Dist. LEXIS 8369 (N. D. Ill. 2003) (product configuration trade dress).
Harvest Technologies Corporation v. Cytomedix, Inc., No. 02cv12077 (D. Mass. Oct. 23, 2002); 2004 U.S. Dist. LEXIS 18003 (D. Mass. 2004) (settled after 6-day jury trial on May 27, 2005) (biotech patent).
Microchip v. Chamberlain, (U.S.I.T.C. 337-TA-417) (software patent).
Kovarik v. Los Alamos, No. 98-504 (D. N. M. filed 1998) (breach of contract).
LaLeche v. Mothers Work, No. 03-C-5889 (N. D. Ill. filed Aug. 21, 2003) (copyright, trademark infringement, dilution).
Ziebart v. GSI Automotive, No. 01-C-0194 (N. D. Ill. filed Jan. 10, 2001) (trademark, trade dress).
Clorox v. National Products, No. 03-C-2110 (N. D. Ill. filed Mar. 24, 2003) (trademark, trade dress, design patent).
Federal Mogul v. Pylon, No. 00-74626 (E. D. Mich. filed Oct. 16, 2000) (windshield wiper patent).