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Edward H. Rice

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+1.312.460.4219
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+1.312.460.4200
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+1.312.460.4201
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Education

J.D., University of Michigan School of Law, 1988

B.A., English (with Honors), University of Michigan, 1983

Edward H. Rice is a trial lawyer who focuses on complex commercial litigation and, in particular, intellectual property disputes. For more than 30 years, Ed has safely navigated clients through challenging lawsuits by presenting difficult concepts in simple, clear and compelling terms.

Ed began his career at a large national law firm, after which he clerked for a federal judge in Chicago. He then honed his trial skills at the Department of Justice in Washington, D.C., where he defended the federal government in patent disputes and other intellectual property claims asserted by defense contractors and others.

Since returning to law firm practice, Ed has led successful trial teams in all of the major courts in which patent cases are tried: the federal district courts, the International Trade Commission (which addresses infringement disputes over products that are imported into the U.S.) and the Court of Federal Claims (which addresses the government's unauthorized use of patented technology). Ed also has successfully argued many cases in the U.S. Court of Appeals for the Federal Circuit, including an en banc rehearing. His cases have encompassed a wide range of technologies, including medical devices, integrated circuits, pharmaceuticals, internet methods and consumer electronics, to name just a few.

As much as Ed enjoys trial advocacy, he takes even greater pride in applying creative strategies that bring cases to a swift and efficient conclusion. He recently won a patent case on a non-infringement argument that he framed within an initial motion to dismiss. The strategy saved the client from spending money and resources on discovery, claim construction proceedings and trial. Ed later applied this same strategy for another client, again shooting down an infringement claim with a threshold, rifle-shot motion.

Ed's experience also extends beyond patent litigation. He has represented clients in trademark infringement cases, trade secret litigation and copyright disputes—including a copyright trial over the movie Twister, in which Ed represented Stephen Spielberg, Michael Crichton and the studios. In addition, Ed has counseled clients who have faced intellectual property issues arising in a wide range of legal and business matters, such as bankruptcy proceedings, insurance litigation, merger and acquisition negotiations, licensing activities and employment disputes.

Representative Matters

Federal District Court

    Patent cases

  • Lead trial counsel for large international generic pharmaceutical company in "Hatch Waxman" litigation over a product with a $750 million domestic market. Won an invalidity judgment at trial on the later-expiring family of patents. That judgment allowed the client to launch its generic product several years before those patents would have expired.  Successfully argued and defended the invalidity judgment on appeal.
  • Lead trial counsel in patent infringement case involving dental tool technology. Tried the case and won a judgment on a non-infringement defense. Argued the appeal and successfully defended the judgment.
  • Co-lead trial counsel for Japanese manufacturer in patent infringement jury trial over "touch panel" switches used in consumer electronics devices. Filed a successful pre-trial motion that eliminated most of the damage base. After trial, the jury awarded a small award and the case settled on appeal.
  • Lead counsel for world's largest online retailer and consumer products manufacturer in patent infringement case relating to flexible data display technology. Successfully argued summary judgment motion for invalidity defense (patent claim was "indefinite") and won an attorney fee award against the plaintiff (a non-practicing entity).
  • Lead counsel for world's largest online retailer and consumer products manufacturer in patent infringement case relating to e-book reader displays. Won a strategic motion to transfer the case from Puerto Rico to the Northern District of California.
  • Lead counsel for national telecommunications company in a multiple-defendant patent infringement lawsuit relating to wireless communications technology. Convinced the plaintiff to allow client to sit out discovery while our team collected non-infringement evidence. Presented non-infringement case to plaintiff, which then voluntarily dismissed our client from the lawsuit.
  • Lead counsel for national restaurant franchise in patent case involving credit card processing systems. Won a judgment for the client on an unusual non-infringement theory framed within a threshold motion to dismiss. Argued the appeal and successfully defended the judgment.
  • Lead counsel for national hardware retailer in patent case 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 oppose the second motion, the plaintiff voluntarily dismissed its case with prejudice.
  • Lead counsel for plaintiff in patent case against competitor involving valve-turning equipment for underground pipes. Obtained injunction and damage settlement.
  • Lead counsel for plaintiff in patent case against competitor involving flanges used to join prefabricated concrete blocks in construction industry. After claim construction ruling, negotiated a stipulated injunction and a damage settlement.
  • Successfully represented clients in dozens of other patent cases involving: internet loan systems, laser-assisted manufacturing for structural components on airplanes, industrial plastic wrap technology and machinery, manufacturing control systems, food processing methods and equipment, cell phone and wireless technology, and many other technologies.

    Trademark, Trade Secret and Copyright Cases

  • Lead counsel for international telecommunications company in trade secret case involving internet-based entertainment systems. Won strategic summary judgment motion that eliminated the plaintiff's central damage claim. Then settled the case for nuisance value.
  • Lead counsel for trademark owner, a well-known Chicago restaurant, in trademark infringement case. Won summary judgment on infringement and obtained a permanent injunction against the competitor.
  • Lead counsel for trademark defendant based in Australia. Won motion to dismiss on jurisdictional grounds and successfully defended the dismissal on appeal.
  • Represented defendants (screenwriter, director, producer, and film studio) at copyright infringement trial over the Steven Spielberg/Michael Crichton movie "Twister." Won jury verdict of non-infringement.
  • Represented defendants in various trade secret actions involving technologies ranging from consumer products to commodities trading software.

International Trade Commission (IP cases relating to imported products)

  • Lead trial counsel for Taiwanese manufacturer of integrated circuits in two separate patent cases concerning display controller technology for computer displays. Won the first trial before the Administrative Law Judge after discrediting the opponent's expert witness in a cross-examination that the judge quoted extensively in his ruling. After the judge issued this ruling, the patent owner voluntarily dismissed the client from the second case, while continuing its case against the other parties.
  • Co-lead trial counsel for computer chip manufacturer in multi-party patent infringement case concerning computer memory storage devices. Won a "no violation" ruling (while the other accused parties were subject to "exclusion orders").
  • Counsel for Taiwanese semiconductor manufacturer in patent infringement case involving semiconductor fabrication and photolithography. Hired by client after trial to draft briefs and argue post-trial motions. Invalidated all but one narrow claim that client easily designed around without any business disruption.

Court of Federal Claims (IP claims asserted against the Government)

  • Lead trial counsel for the government in a patent case involving Navy and Coast Guard computer-based ship-board tactical data systems. After a two-week trial, the judge entered judgment for the government on a non-infringement defense, noting that the plaintiff's expert had been thoroughly discredited on cross-examination.
  • Lead appellate counsel for the government in a trade secret case filed by a federal prisoner, who alleged that the government had stolen his idea for a Kevlar cutting device (which the prison used to manufacture military helmets). Assigned to the case after the prisoner, who was represented pro bono by a national law firm, won an appeal that reversed a lower court judgment for the government. Won a petition for en banc rehearing and overturned the adverse appeal order. Briefed and argued the case before an en banc court, which ultimately affirmed the lower court judgment for the government.
  • Lead counsel for the government in a case involving two patents for manufacturing portable panels for bomb-proof shelters. Won summary judgment on one patent on a license defense after proving that the claimed invention was developed (and first "reduced to practice") under a series of Air Force research contracts. Obtained summary judgment of non-infringement on the remaining patent.
  • Lead counsel in Invention Secrecy Act case in which the plaintiff allegedly was harmed by a government secrecy order applied to a patent application for a missile guidance device. Won summary judgment on grounds that that the plaintiff had suffered no harm because it could not plausibly exploit the technology after the government declined to implement it.
  • Lead counsel for the government in a patent case involving pioneering laser patent involving YAG lasers. Won summary judgment on license defense after unearthing a decades-old contract report proving that the claimed invention had been developed (and first "reduced to practice") under a military research contract.
  • Represented the government on a wide variety of other intellectual property matters and technologies, including satellite orbit-correction systems, military hovercrafts, and cutting-edge drug research at the National Institutes of Health.

Honors

Illinois Super Lawyers, 2009-present

"Top Lawyers in Illinois" in Intellectual Property Law (Leading Lawyers Network), 2004-present

Special Achievement Award, U.S. Department of Justice 1993, 1994, 1995

Speeches

Panelist, "Enforcing Patents in 2018: Risks & Opportunities," The IP Strategy Summit: Chicago (June 2018)

Panelist, "NPE Defense," The IP Strategy Summit: Chicago (May 2017)

Presenter, "Roundtable: Analyzing the Merits of Your Case," The IP Strategy Summit: Chicago (November 2016)

Panelist, "Pre-Trial Litigation Strategy," The IP Strategy Summit: Chicago (April 2016)

Panelist, "Defensive Portfolio Management & Due Diligence Strategies," The IP Strategy Summit: Chicago (October 2015)

Presenter, "Ethical Questions in IP Practice," The Richard Linn American Inn of Court, Chicago, Illinois (September 2015)

Panelist, "The Price of Entry: Litigating & Enforcing Against Operating Companies," The IP Strategy Summit: Chicago (May 2015)

Panelist, "Preparing for Litigation: A Defensive Perspective," The IP Strategy Summit: Chicago (October 2014)

Co-Presenter, "The Legal and Economic Issues of Standard Setting: SSOs, SEPs and F/RAND," An Antitrust and IP Breakfast Seminar, Chicago, Illinois (April 2014)

Moderator and Panelist, "Hot Topics for IP Counsel: Trolls, Violations, and Congress," Association of Corporate Counsel, Chicago Chapter, Dinner Presentation (March 2014)

Co-Presenter, "Patent Mismarking 2010 and Beyond," Law Bulletin Seminars' Annual Corporate Intellectual Property Law Conference," Chicago, Illinois (February 2011)

Co-Presenter, "Patent Law Update," Law Bulletin Seminars' Annual Corporate Intellectual Property Law Conference, Chicago, Illinois (May 2010)

Publications

"Twiqbal Motions — Are They Worth It?", Law360.com (July 12, 2012)

"A Strategic Approach to Patent Litigation," Inside the Minds: Patent Litigation and Dispute Resolution (March 2008)

"After eBay: Can the ITC Offer Better Remedies Than District Courts?", Co-Author, Intellectual Property Litigation, Vol. 19, No. 2 (Winter 2008)

"Avoiding Willful Infringement Exposure: Are Opinion Letters Still Necessary?", The Metropolitan Corporate Counsel (December 2007)

"Recent Patent Law Changes: Good or Bad for Business?", Co-author, The Metropolitan Corporate Counsel (June 2007)