“Doing a good job is not enough. It’s my responsibility to ensure we work strategically and effectively toward delivering outstanding results for all our clients.”
120 South LaSalle Street|
Chicago, IL 60603VCard
Timothy P. Maloney’s practice entails all aspects of intellectual property enforcement and defense, with an emphasis on representing patent owners 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. He has served in first-chair and second-chair roles in numerous successful jury and bench trials. With claim construction at the heart of most patent disputes and critical to accurate patent analysis in all contexts, Tim is regularly tapped for his experience in this area, developed from lead counsel roles in many dozens of claim construction proceedings and Markman hearings. Tim also handles appeals and has successfully argued several cases before the U.S. Court of Appeals for the Federal Circuit.
United States Gypsum Co. v. National Gypsum Corp. (D. Del. 2017–18). Lead counsel representing USG in pursuing claims of infringement against National Gypsum under numerous patents directed to gypsum wallboard manufacturing technology.
National Gypsum Corp. v. United States Gypsum Co. (PTAB 2017). Lead counsel representing USG in seven IPR proceedings filed against patents directed to gypsum wallboard manufacturing technology. After submission of patent owner preliminary responses, obtained PTAB decisions denying institution of trial in all proceedings.
Industrial Print Technologies v. Hewlett-Packard Co. et al. (N.D. Tex. 2015–18). Lead counsel representing the plaintiff in a patent infringement action involving multiple patents related to high-speed industrial printing. Seven separate actions are consolidated for pre-trial discovery and claim construction.
Limestone Memory Systems LLC v. Micron Technology, Inc. et al. (C.D. Cal. 2015–18). Lead counsel representing the plaintiff in patent infringement actions related to memory chip design.
Lone Star Silicon Innovations LLC v. Toshiba Corporation et al. (N.D. Cal. 2016–18). Lead counsel pursuing claims of infringement against Toshiba, Micron, Nanya, UMC, Renesas, and SMIC under multiple patents related to semiconductor design and fabrication.
Transcenic, Inc. v. Nokia Inc. (N.D. Ill. 2016–17). Lead counsel pursuing claims of infringement against Nokia under patent relating to spatially referenced street-level imagery for automobile navigation systems. Case settled during discovery.
Google Inc. and Apple Inc. v. ContentGuard Holdings, Inc. (PTAB 2015). Co- lead counsel 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.
Ex Parte Reexamination of Transcenic Patent (USPTO 2015). Lead counsel defending Transcenic’s spatially referenced imaging system patent (U.S. RE42,289) against reexamination challenge filed by Google Inc. After submission of patent owner response and expert declaration, obtained certificate confirming validity of all claims without amendment.
Transcenic, Inc. v. Google, Inc., et al. (D. Del. 2011–15). Lead counsel pursuing claims of infringement against Google, Microsoft, and AOL under patent relating to spatially referenced street-level imagery for Web mapping applications. Obtained favorable claim interpretation ruling leading to settlements with two defendants. Defeated Google's non-infringement and invalidity summary judgment motions, and obtained summary judgment against lack of ownership defense. Prevailed on Google's Daubert challenge to novel damages model apportioning search advertising revenue to accused Street View feature of Google Maps. Case settled on the eve of trial.
TK Holdings Inc. v. CTS Corporation and CTS Automotive Products (E.D. Mich. 2008–14). Lead counsel pursuing declaratory judgment claims of non- infringement and invalidity of patents relating to automotive seat weight sensors. Obtained summary judgment rulings that TK Holdings' sensors do not infringe and that the asserted patents are invalid for multiple reasons.
Safeway, Inc. and The Kroger Co. v. Kroy IP Holdings, LLC (PTAB 2014). Co-lead counsel representing Kroy IP Holdings in IPR proceeding filed against its digital incentive program patent, U.S. 7,054,830. After submitting patent owner preliminary response, obtained PTAB decision denying institution of trial.
Outside the Box Innovations, LLC v. Travel Caddy, Inc. (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.
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. Best Buy Co., Inc., et al. (E.D. Tex. 2010–13). Trial counsel in jury trial consolidating various defenses of invalidity asserted by seven major retailers against patents for activating stored-value cards at the point of sale. Obtained jury verdict affirming validity of the patents. Obtained substantial settlements thereafter.
Ex Parte Reexamination of Alexsam Patents (USPTO 2011–12). Co-lead counsel defending Alexsam stored-value card activation patents in six reexamination proceedings instituted by litigation defendants. After submission of patent owner responses and expert declarations, obtained decisions confirming validity of both patents without claim amendments.
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 Alexsam stored-value card activation patents, resulting in $18 million verdict. Trial counsel in subsequent bench trial addressing potential reduction of verdict under most-favored licensee provision of license agreement. Prevailed in bench trial, 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 stored-value card activation patents. Obtained jury verdict resulting in plaintiff’s judgment of $10.1 million. Argued appeal to Federal Circuit, resulting in affirmance of patent validity and partial affirmance of infringement verdict.