Education
J.D., Chicago-Kent College of Law
M.S., Electrical Engineering, University of Illinois at Chicago
B.S., Computer Science and Biology, University of Illinois at Chicago
Bar Admissions
- Illinois
Court Admissions
United States District Court for the Northern District of Illinois
United States Court of Appeals for the Federal Circuit
Marina N. Saito has more than 20 years of experience helping clients protect their technology. Marina began her career by obtaining protection for her clients' intangible assets by filing patent, trademark and copyright applications. But after several years, she shifted her focus to litigation, where she enjoys advocating for clients in technology disputes.
Marina takes particular pride in identifying "quick kill" strategies that deliver decisive victories with maximum efficiency. For example, representing a large national restaurant franchise, she recently formulated a strategy for asserting a non-infringement defense in an initial motion to dismiss. Though courts rarely address non-infringement defenses before the parties conduct discovery and claim construction proceedings, the strategy worked and the case was terminated—essentially before it began. Marina later applied a similar strategy for another client, again winning a case-ending judgment on a threshold motion to dismiss.
With degrees in Electrical Engineering, Computer Science and Biology, Marina provides value to clients across a wide range of industries. Her cases have covered the technology spectrum, from pharmaceutical and biomedical technologies to semiconductor fabrication and internet-based systems—and virtually everything in between.
Representative Matters
- Represented national fast-food franchise in patent infringement case in Illinois relating to data security systems. Formulated a defense strategy for affirmatively proving non-infringement as a matter of law on a threshold motion to dismiss. The motion assumed all the plaintiff's allegations and avoided the need to construe a single claim term. This unusual procedural strategy worked and led the district court to dismiss the claim with prejudice in a judgment that the Federal Circuit affirmed.
- Represented world's largest online retailer and consumer products manufacturer in patent infringement case in Delaware relating to flexible data display technology. Successfully argued summary judgment motion for invalidity based on indefiniteness, and won an attorney fee award against a non-practicing entity.
- Represented large international generic pharmaceutical company in "Hatch Waxman" litigation in Indiana over a product with a $750 million domestic market. Won an invalidity judgment on the later-expiring family of patents, enabling the client to launch its generic product several years before those patents would have expired. Successfully defended the invalidity judgment on appeal.
- Represented Taiwanese manufacturer of integrated circuits before the International Trade Commission ("ITC") in patent case concerning display controller technology for computer displays. Won non-infringement ruling at trial. After ITC overturned trial victory, won pivotal issue that limited exclusion order to obsolete devices.
- Represented national hardware retailer in patent case in Illinois involving credit card processing systems. Won a motion to dismiss on a non-infringement theory based on the detailed infringement allegations in the complaint. Filed a second motion to dismiss after the plaintiff amended the complaint. Rather than brief the second motion, the plaintiff voluntarily dismissed its case with prejudice.
- Represented world's largest online retailer and consumer products manufacturer in a patent infringement claim filed in Puerto Rico relating to e-book reader displays. Won a strategic motion to transfer the case to the Northern District of California. After the transfer, the plaintiff voluntarily dismissed its case with prejudice, but was forced to defend itself against our client's fee petition.
- Represented national telecommunications company in a multiple-defendant patent infringement lawsuit in Texas relating to wireless communications technology. Avoided expensive discovery and motion practice by convincing plaintiff to allow client to sit out discovery while it compiled its non-infringement evidence. Convinced plaintiff to voluntarily dismiss our client from the case.
- Represented Taiwanese semiconductor manufacturer in post-trial International Trade Commission proceedings in patent case involving semiconductor fabrication and photolithography. Obtained invalidity ruling on all but one claim. Orchestrated strategy in which client designed-around the remaining claim and convinced the U.S. Customs Service not to exclude the new design.
- Represented defendant in patent infringement trial in Pennsylvania involving ultrasonic dental instrument. Won non-infringement judgment at trial and successfully defended that judgment on appeal.
- Represented international telecommunications company in Indiana trade secret case involving internet-based entertainment systems. Won summary judgment on the central damage claim and then settled the case for nuisance value.
- Represented plaintiff in a patent lawsuit in California against a competitor that was infringing a patent claim addressing valve-turning equipment for underground pipes. Obtained injunction and damage settlement.
- Represented a plaintiff in a patent litigation in New Jersey involving devices used to connect concrete slabs in building construction. Settled the case for a damage payment and a stipulated injunction.
Honors
Illinois Super Lawyers, Intellectual Property Litigation, 2023