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R. MARK HALLIGAN

R. Mark Halligan is an accomplished trial lawyer who focuses his practice on intellectual property litigation and complex commercial litigation. Mark has successfully represented both individuals and corporations as plaintiffs and defendants in federal and state courts in the United States. He is also a recognized thought leader in the ever-growing area of trade secrets law and has spoken worldwide to numerous organizations and corporations on the topic.

What do you focus on?

My practice focus includes two main areas:

Intellectual Property Litigation

I have tried cases involving patent, trademark and copyright issues. In a recent engagement, I was the lead trial counsel for a major wireless technologies company in a Section 337 proceeding before the International Trade Commission for alleged patent infringement requesting exclusion and cease and desist orders relating to alleged infringement of a U.S. patent involving electronic notebooks, tablets, smartphones, e-readers, data cards, handheld game consoles and other consumer electronic devices with wireless capabilities.

Trade Secrets Litigation and Counseling

I have successfully tried numerous cases regarding the misappropriation, protection and enforcement of trade secrets.

I frequently advise corporate entities and conduct internal audits on trade secret valuation, asset management and best practices to minimize the misappropriation of trade secrets.

What do you see on the horizon?

The identification, classification, protection and valuation of trade secret assets will emerge as critical legal and business functions in intellectual property law.

Publications and presentations

  • “Trade Secret and Patent Protection After AIA: Making the Choice,” Strafford Live CLE Seminar, Chicago, Illinois, March 26, 2014. (Speaker)
  • “Intellectual Property Rights in Licensing: 5 Keys for Negotiating Business Contracts,” Illinois Institute for Continuing Legal Education (ILCLE), Palatine, Illinois, March 21, 2014. (Speaker)
  • “Trade Secret Trends Impacting the Insurance Industry,” Nixon Peabody LLP Webinar, Chicago, Illinois, and San Francisco, California, March 18, 2014. (Speaker)
  • “Your Most Valuable IP Assets Could Be Secret: Maximizing the Value of Trade Secrets in 2014,” Stout Risius Ross, Inc./Nixon Peabody LLP Webinar, Chicago, Illinois, March 11, 2014. (Speaker)
  • “Recent Developments in Trade Secrets Law,” 58th Annual Conference on Developments in Trade Secrets Law, John Marshall Law School, Chicago, Illinois, February 28, 2014. (Speaker)
  • “Best Practices for Protecting Trade Secrets,” Telebriefing with Daniel P. Westman and Victoria A. Cundiff, Law Seminars International, February 6, 2014. (Moderator/Speaker)
  • “Recent Developments in Trade Secrets Law,” 2014 IPLAC 24th Annual Trade Secrets Seminar, John Marshall Law School, January 16, 2014. (Speaker)
  • “Protecting Trade Secret Assets in the 21st Century,” BP America, Inc., Naperville, Illinois, November 14, 2013. (Speaker)
  • “Top Ten Things You Must Know About Trade Secrets Law,” IP Law Symposium, Intellectual Property Law Association of Chicago (IPLAC), Chicago, Illinois, November 8, 2013. (Speaker)
  • “Protecting Your Intellectual Capital and Confidential Business Information: Maintaining Corporate Protectable Interests in the Face of Increasing Employee Mobility,” Millennium Knickerbocker Hotel, Chicago, Illinois, November 4–6, 2013. (Conference Co-Chair
  • “The Increasing Importance of Trade Secrets in Intellectual Property Portfolio Management in an Uncertain Patent Landscape,” Licensing Executives Society (LES), Annual Meeting, Philadelphia, Pennsylvania, September 25, 2013. (Speaker)
  • “Recent Developments in Trade Secret Law: Trade Secret Management & Monetization Symposium Ocean Tomo,” Chicago, Illinois, September 10, 2013. (Moderator/Speaker)
  • “Trade Secrets—Effective Protection for Innovation?” AIPPI ExCo/Forum Helsinki, Finland, September 7, 2013. (Speaker)
  • “Protecting U.S. Trade Secret Assets,” LANDSLIDE Magazine, American Bar Association Section of Intellectual Property Law, (ABA-IPL) Volume 6, No. 1, September/October 2013.
  • “Hot Topics & Current Developments in Patent, Trademark, Copyright and Trade Secrets Law,” 57th Annual Seminar, The John Marshall Law School, February 22, 2013. (Speaker)
  • The 2012 IPLAC 23rd Annual Trade Secrets Seminar, The John Marshall Law School, "Recent Developments in Trade Secrets Law", December 5, 2012. (Speaker)
  • “Managing and Valuing Trade Secrets” Webinar, Certified Patent Valuation Analyst (CPVA), The Business Development Academy (BDA), November 13, 2012. (Speaker)
  • “Significant Developments in Trade Secrets,” Trade Secret Law Summit, American Intellectual Property Law Association (AIPLA) Annual Meeting, Washington, DC, October 23, 2012. (Speaker)
  • “Industry Perspective on Threats and Challenges to Protecting Trade Secrets,” National Intellectual Property Rights (IPR) Coordination Center, Arlington, VA, September 20, 2012. (Speaker)
  • “Recent Federal Developments in Trade Secrets Law 2012-2013,” Intellectual Property Owners Association (IPO) Annual Meeting, September 11, 2012. (Speaker)
  • “Intellectual Property Licensing Agreements,” Illinois Institute of Continuing Legal Education (IICLE), Chicago, June 22, 2012. (Moderator and Speaker)
  • “Trade Secrets: Your Secret Weapon Under Patent Reform,” SRR Journal, Spring 2012. (Co-author with David Haas)
  • “The Internationalization of Trade Secret Disputes, Big Cases, Big Verdicts and Big Challenges,” AIPLA Spring Meeting, Dallas, Texas, May 10, 2012. (Moderator)
  • “Sabermetrics See Recent Scrutiny,” Chicago Daily Law Bulletin, May 29, 2012.  (Coauthor with Matthew Frankel)
  • “How to Keep Trade Secrets from Walking Out the Door,” Bloomberg BNA Webinar, May 1, 2012. (Speaker)
  • “Computers and Trade Secrets: Making Certain That In-House and Outside Counsel Protect Their Client’s Trade Secrets,” AIPLA, April 18, 2012. (Speaker)
  • “Computers and Trade Secrets: Ethical Considerations for Inside and Outside Counsel Protecting Trade Secrets.” North Suburban Bar Association, 2nd District Courthouse, Skokie, Illinois, April 17, 2012. (Speaker)
  • “Baseball’s Trade Secrets—Secret Sabermetrics: Trade Secret Protection in the Baseball Analytics Field,” Nixon Peabody Webinar, April 4, 2012. (Co-presenter)
  • “Recent Developments in Intellectual Property Law: Trade Secret Law,” The John Marshall School of Law Intellectual Property Conference, February 24, 2012. (Speaker)
  • “Trade Secret Assets: Management and Valuation,” BVR (Business Valuation Resources LLC) Webinar, January 18, 2012
  • “Trademark Surveys: A Litigator’s Guide,” Oxford University Press. (2011). (Coauthor with James T. Berger)
  • “Roundtable Discussion of Supreme Court case Microsoft Corp. v. i4i Limited Partnership,” DePaul University School of Law, April 7, 2011. (Speaker)
  • “Recent Developments in Trade Secrets Law,” Annual Meeting, American Intellectual Property Law Association (AIPLA), Washington, DC, October 21–23, 2010. (Speaker)
  • “Trade Secrets v. Patents: The New Calculus,” ABA Intellectual Property Law (ABA-IPL) Landslide magazine, July/August 2010. (Author)
  • “Patentable Subject Matter After the Supreme Court Bilski Opinion,” DePaul University School of Law. (Speaker)
  • ABA IPL Annual Review of Intellectual Property Law Developments 2006-2008, ARVC Division IV and Contributor on Trade Secrets.
  • Trade Secret Asset Management: An Executive’s Guide to Information Asset Management, Including Sarbanes-Oxley Accounting Requirements for Trade Secrets (with Richard F. Weyand), Aspatore Books (2006).
  • “Protection of U.S. Trade Secret Assets: Critical Amendments to the Economic Espionage Act of 1996,” 7 J. Marshall Rev. Intell. Prop. L. 656 (2008).
  • “Protecting Trade Secrets,” CLE Presentation, Mentor CLE, January 2008.
  • “Capturing the Value of Trade Secrets,” Business Power: Creating New Wealth from IP Assets, Chapter 7, The National Knowledge & Intellectual Property Management Taskforce, John Wiley & Sons, Inc. (2007).

Representative Experience

  • Trial counsel for major wireless technologies company in Section 337 proceedings before the Intnl Trade Commission for alleged patent infringement requesting exclusion and cease and desist orders relating to alleged infringement of U.S. Patent
    Trial counsel for major wireless technologies company in Section 337 proceedings before the International Trade Commission for alleged patent infringement requesting exclusion and cease and desist orders relating to alleged infringement of U.S. Patent No. 5,809,336 (the ‘336 patent) involving electronic notebooks, tablets, smartphones, e-readers, data cards, handheld game consoles and other consumer electronic devices with wireless capabilities.

  • Trial counsel in trade secret misappropriation dispute relating to the design and development and misappropriation of a complex proprietary consumer bankruptcy software system development and theft of a complex proprietary law firm consumer bankruptc
    Trial counsel in trade secret misappropriation dispute relating to the design and development and misappropriation of a complex proprietary consumer bankruptcy software system development and theft of a complex proprietary law firm consumer bankruptcy software system.

  • Trial counsel in trade secret misappropriation and unjust enrichment lawsuit involving proprietary technologies relating to the up tower repair of defective wind turbines.
    Trial counsel in trade secret misappropriation and unjust enrichment lawsuit involving proprietary technologies relating to the up tower repair of defective wind turbines.

  • . . . View all . . .
  • Trial counsel for defendants in lawsuit involving alleged violations of non-compete and non-disclosure obligations, breach of fiduciary duties, unfair competition, unjust enrichment and civil conspiracy in the niche group travel market.
    Trial counsel for defendants in lawsuit involving alleged violations of non-compete and non-disclosure obligations, breach of fiduciary duties, unfair competition, unjust enrichment and civil conspiracy in the niche group travel market.

  • Retained by defendants as testifying expert in trade secrets misappropriation lawsuit in California.
    Retained by defendants as testifying expert in trade secrets misappropriation lawsuit in California.

  • Retained as special counsel in defense of claims for recovery of attorneys fees based on allegations of "bad faith" litigation under the Uniform Trade Secrets Act.
    Retained as special counsel in defense of claims for recovery of attorneys fees based on allegations of “bad faith” litigation under the Uniform Trade Secrets Act.

  • Retained as appellate counsel in appeal by Plaintiff of the dismissal of a trade secret misappropriation claim relating to proprietary software systems.
    Retained as appellate counsel in appeal by Plaintiff of the dismissal of a trade secret misappropriation claim relating to proprietary software systems.

  • Lead trial counsel in Michigan lawsuit involving alleged violations of non-compete and non-disclosure obligations, breach of fiduciary duties, unfair competition, unjust enrichment and civil conspiracy.
    Lead trial counsel in Michigan lawsuit involving alleged violations of non-compete and non-disclosure obligations, breach of fiduciary duties, unfair competition, unjust enrichment and civil conspiracy.

  • Trial counsel for major telecommunications company in federal court action for violations of the Computer Fraud and Abuse Act and trade secret misappropriation in the United States District Court for Northern District of Illinois.
    Trial counsel for major telecommunications company in federal court action for violations of the Computer Fraud and Abuse Act and trade secret misappropriation in the United States District Court for Northern District of Illinois.

  • Trial counsel for major national health and fitness client in action against former chief operating officer in federal court action for violations of the Computer Fraud and Abuse Act and trade secret misappropriation in the Northern District of Illin
    Trial counsel for major national health and fitness client in action against former chief operating officer in federal court action for violations of the Computer Fraud and Abuse Act and trade secret misappropriation in the Northern District of Illinois.

  • Trial counsel for international general contractor engaged in the engineering and construction of industrial facilities in federal court action for the threatened or actual misappropriation of trade secrets
    Trial counsel for international general contractor engaged in the engineering and construction of industrial facilities in federal court action for the threatened or actual misappropriation of trade secrets relating to proprietary zinc solvent extraction technologies and other federal and state claims in the United States District Court for the Southern District of Illinois.

  • Trial counsel for the largest audio manufacturer in the US in the defense of a lawsuit for the alleged misappropriation of trade secrets relating to acoustic echo cancellation technologies in Utah state court.
    Trial counsel for the largest audio manufacturer in the US in the defense of a lawsuit for the alleged misappropriation of trade secrets relating to acoustic echo cancellation technologies in Utah state court.

  • Trial counsel for manufacturer of mobile airfield lighting systems for military applications in defense of a lawsuit for trade secret misappropriation in state court in Cook County, Illinois.
    Trial counsel for manufacturer of mobile airfield lighting systems for military applications in defense of a lawsuit for trade secret misappropriation in state court in Cook County, Illinois.

  • Trial counsel for manufacturer of borosilicate and quartz glassware for the biomedical, environmental, pharmaceutical, educational, chemical, chromatography and laser industries
    Trial counsel for manufacturer of borosilicate and quartz glassware for the biomedical, environmental, pharmaceutical, educational, chemical, chromatography and laser industries and governmental agencies in state court action for trade secret misappropriation and other claims in Cook County, Illinois.

  • Trial counsel for investigative firm engaged in the investigation of financial fraud and counterfeiting activities in trade secret misappropriation and breach of contract action in the United States District Court for the Northern District of Califor
    Trial counsel for investigative firm engaged in the investigation of financial fraud and counterfeiting activities in trade secret misappropriation and breach of contract action in the United States District Court for the Northern District of California.

  • Trial counsel for manufacturer of on-line process analyzers and instruments in defense of trade secret misappropriation claims relating to the alleged misappropriation of source code
    Trial counsel for manufacturer of on-line process analyzers and instruments in defense of trade secret misappropriation claims relating to the alleged misappropriation of source code and testing harnesses in the United States District Court for the Northern District of Illinois.

  • Trial counsel for manufacturer of greeting cards in defense of action for copyright infringement of six greeting cards in the United States District Court in Minneapolis, Minnesota.
    Trial counsel for manufacturer of greeting cards in defense of action for copyright infringement of six greeting cards in the United States District Court in Minneapolis, Minnesota.

  • Trial counsel for agricultural and construction equipment manufacturer in patent infringement suit involving round hay balers in the United States District Court for the Eastern District of Wisconsin.
    Trial counsel for agricultural and construction equipment manufacturer in patent infringement suit involving round hay balers in the United States District Court for the Eastern District of Wisconsin.

  • Trial counsel for manufacturer of custom-designed optical filters and coatings in trade secret misappropriation lawsuit relating to optical interference filters in state court in Brattleboro, Vermont.
    Trial counsel for manufacturer of custom-designed optical filters and coatings in trade secret misappropriation lawsuit relating to optical interference filters in state court in Brattleboro, Vermont.

  • Trial counsel for major telecommunications manufacturer in action for trade secret misappropriation relating to technologies involved in call center solutions in state court in DuPage County, Illinois.
    Trial counsel for major telecommunications manufacturer in action for trade secret misappropriation relating to technologies involved in call center solutions in state court in DuPage County, Illinois.

  • Trial counsel for an international warehouse distributor of tools and equipment in trade secret misappropriation lawsuit for the memorization and theft of proprietary customer information in state court in Cook County, Illinois.
    Trial counsel for an international warehouse distributor of tools and equipment in trade secret misappropriation lawsuit for the memorization and theft of proprietary customer information in state court in Cook County, Illinois.

Media Clips

  • Strong Software Patents Crucial, Michel Tells Justices
    Law360 | January 28, 2014
    Chicago Intellectual Property Litigation partner Mark Halligan is noted in this article for his representation of the International Association for the Protection of Intellectual Property who recently filed an amicus brief with the Supreme Court urging that any ruling that weakens software patents "would be a step backward for the United States."
  • Big Law Social Media Success Strategies
    The American Lawyer | October 1, 2013
    Chicago Intellectual Property Litigation partner Mark Halligan’s use of Twitter is highlighted in this feature story.
  • Protecting U.S. Trade Secret Assets in the 21st Century
    Landslide | September 1, 2013
    Chicago Intellectual Property Litigation partner Mark Halligan wrote this article discussing the need for U.S. companies and the intellectual property bar to place more importance on trade secret asset protection.
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  • Lawyers See IP Protection Help in U.S. Trade-Secrets Focus
    Reuters | February 22, 2013

    Chicago Intellectual Property Litigation partner Mark Halligan discusses efforts to combat trade-secret theft.

  • Seventh Circuit Ruling Clears Website of Infringement
    Chicago Daily Law Bulletin | August 3, 2012

    This article focuses on a ruling from the 7th U.S. Circuit Court of Appeals indicating that a website that provides copyrighted videos without consent does not contribute to copyright infringement. Chicago intellectual property partner Mark Halligan provides third party commentary.

  • Expert Witness: Lawyers Put Their Legal Skills to Use in Creative Way
    Chicago Lawyer | August 1, 2012

    Chicago intellectual property litigation partner Mark Halligan discusses how attorneys and law professors serve as consultants to strengthen cases before trial and as experts to do reports, give depositions, and provide testimony if a case goes to trial.

  • Sabermetrics Sees Recent Scrutiny
    Chicago Daily Law Bulletin | May 30, 2012

    This contributed article, authored by Chicago Intellectual Property Litigation partner Mark Halligan and San Francisco Labor & Employment associate Matt Frankel, discusses trade secrets in baseball—specifically “sabermetrics,” the advanced statistical analysis for evaluating players.

  • U.S. Tries Cracking Down on Economic Espionage
    Chicago Daily Law Bulletin | March 9, 2012

    Chicago Intellectual Property Litigation partner Mark Halligan provides commentary about the recent surge in trade secrets theft cases, especially those involving possible espionage.

  • Defensive ESI Strategies in Trade Secret Misappropriation Litigation
    BNA's Patent, Trademark & Copyright Journal | January 6, 2012

    This contributed article, authored by Chicago Intellectual Property Litigation partner Mark Halligan, notes that the battleground for trade secrets litigation now involves electronically stored information. Mr. Halligan offers strategies for preventing and defending such lawsuits.

  • Legal Focus: Trade Secrets and Confidential Information
    Lawyer Monthly Magazine | January 1, 2012
    This featured Q&A profiles Chicago intellectual property litigation partner Mark Halligan and focuses on the issues surrounding trade secrets and confidential information. For the complete article, please click here.
  • Federal Bill Pits Creative Industries against the Internet in Piracy Fight
    Chicago Daily Law Bulletin | November 29, 2011

    This article discusses the Stop Online Piracy Act (SOAP) which is being debated in the U.S. House of Representatives and would give owners of intellectual property the power to quickly shut down "rogue websites" pirating their goods. Chicago intellectual property litigation and trade secrets partner Mark Halligan provides commentary.

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R. Mark Halligan