Edward Manzo

Husch Blackwell LLP

$ $$$

South Riverside Plaza 120
Chicago 60606 IL US

With a degree in Physics, Edward D. Manzo’s experience extends across a broad range of technologies. He is well-known in the intellectual property community and has resolved patent, trademark and trade dress cases for manufacturers of semiconductors circuits and fabrication, consumer goods, computing systems, infrastructure materials and medical technology.

Edward traces his industry connection to his prelaw days when he operated equipment in a factory, rebuilt an automobile engine and worked as a motorcycle mechanic for Honda. He handles patent matters in all levels of the federal courts and in the PTO’s Patent Trial and Appeals Board (PTAB). For example, in representing a baby and children’s products manufacturer charging patent infringement against a competitor.

He argued before Judge Gilstrap of the EDTX in 2015 and obtained a claim construction ruling as requested, overcoming a string of defeats by prior counsel where courts (including the EDTX and the Federal Circuit) had limited the scope of ancestor patents based on the doctrine of prosecution disclaimer.

He persuaded Judge Gilstrap that the disclaimer had been rescinded in this patent. After the claim construction ruling, the case settled. Nevertheless, the competitor had already initiated an inter partesreview at the PTAB which challenged the validity of the patent in suit.

On September 21, 2016, the PTAB ruled entirely in favor of Edward’s client, holding that the competitor had failed to show invalidity. (IPR2015-00979) In another 2015 case in California where the same baby and children’s products client was charged with patent infringement, Edward filed a petition asking the PTAB to commence inter partes review against the patent.

Even though he filed the petition without expert testimony, the PTAB agreed with the positions he argued and commenced the PTAB trial, using patent claim constructions very different from the ones adopted by the magistrate judge in California.

The PTAB ultimately concluded on September 15, 2016 that all of the patent claims of the competitor’s patent were invalid over prior art and denied the competitor’s motion to amend the claims. (IPR2015-00872)

Years before, Edward represented an individual patent owner and won five consecutive appeals at the Federal Circuit, establishing an exception to Supreme Court law in one case, rewriting the equitable defense of laches in three others, and reversing an inequitable conduct ruling in yet another.

Other relevant industry experience includes defending three simultaneous lawsuits in three separate jurisdictions against his client, a manufacturer of plastic and metal tables and chairs and reaching a global settlement; obtaining injunctive relief for a Japanese tool-making company in a family name-trade name dispute; complex character recognition litigation; and limiting damages for patent infringement involving a certain type of conveyor belt to $1 plus costs.

He also has helped clients win reversals at the Court of Appeals of inequitable conduct judgments by trial courts. In 2007 Edward assimilated his decades of patent law experience into “The Claim Construction Game,®” an acclaimed and popular tool for teaching patent claim interpretation for professionals in the legal field.

He has given that lecture for many bar associations and companies. He also taught the doctrinal patent law course at DePaul University College of Law and teaches international patents to M.S. in Law students at Northwestern Law School. He has delivered dozens of lectures for the Patent Resources Group, law schools, bar associations and Intellectual Property Inns of Court.

Edward is widely published in the patent field. He is the author or co-author of four respected reference books: one focuses on patent claim interpretation law in the United States; the second covers the same topic on a global basis; and the third and fourth examine the America Invents Act.

He co-authored the pattern jury instructions (patents) adopted by the U.S. Court of Appeals, Seventh Circuit, in 2008 and the local patent rules adopted in 2009 by the U.S. District Court for the Northern District of Illinois.

One of his books on claim construction was cited by the U.S. Supreme Court and several federal district courts. Before joining the firm in 2010, Edward was a shareholder and co-founder of Cook Alex Ltd. in Chicago.

Experience :

  • Lead counsel or of-counsel for Intellectual Property Law Association of Chicago amicus curiae briefs to the U.S. Supreme Court and the U.S. Court of Appeals, Federal Circuit, in 2004, 2005, 2006, 2009 and 2010.
  • Rewrote the law of laches and estoppel in patent cases. Hemstreet v. Computer Entry Systems Corp., 972 F.2d 1290 (Fed.Cir. 1992)
  • Patented a semiconductor client’s invention which later became the prevalent worldwide approach for biasing a substrate in a low voltage system. The patent became the crown jewel in a licensing program worth hundreds of millions of dollars.
  • Established an exception to the Supreme Court’s Lear Doctrine to preserve a client’s right to receive settlement payments even after the patents in lawsuit were ruled unenforceable. Hemstreet v. Spiegel Inc. and Recognition Equipment Inc., 851 F.2d 348 (Fed.Cir. 1988)
  • Obtained injunctive relief for Japanese corporation in a family name dispute with former CEO of tool-making company. Miyano Machinery USA Inc. v. MiyanoHitec Machinery Inc., 576 F.Supp.2d 868 (N.D.Ill. 2008)
  • Successfully defended sippy cup company Luv N’ Care against a patent infringement suit brought by competitor Munchkin.

Community Leadership :

  • Chicago Engineers Foundation, Board of Directors, 2010-2012
  • DePaul University College of Law, Center for Intellectual Property and Law and Information Technology, Board of Advisors, 2002-present
  • Patent Resources Group Inc., Board of Advisors, 2008-2016; course lecturer, 2009-2016
  • Polytechnic Institute Alumni Association, International Board of Directors, 2011-2014
  • Stradivari Society of Chicago, Patron, 1994-present
  • Local Hospital Ethics Committee, Community Representative

Education :

  • J.D., State University of New York at Buffalo Law School (University at Buffalo)
  • M.A., Trinity Evangelical Divinity School
  • B.S., Polytechnic Institute of New York University

Admissions :

  • U.S. District Court, Northern District of Illinois
  • New York
  • Illinois
  • U.S. District Court, Southern District of New York
  • U.S. Patent and Trademark Office
  • U.S. Supreme Court

Professional Associations and Memberships :

  • Association of Patent Law Firms, Board of Directors, 2007-2008
  • Federal Circuit Bar Association
  • Richard Linn American Inn of Court, Master; group chair, 2009-2010, 2011-2012; group vice chair, 2007-2008
  • U.S. Court of Appeals, Seventh Circuit, Pattern Jury Instruction Committee, Patents Subcommittee, 2005-2008, 2012
  • U.S. District Court, Northern District of Illinois, Local Patent Rules Committee, 2008-2009, 2012.

Cost

Rate : $$$$

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South Riverside Plaza 120
Chicago 60606 IL US
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Broadway 42
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