Intellectual Property Law: Counseling, Licensing, Litigation & Procurement

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Milestones

Banner & Witcoff is a firm of lawyers with a proud tradition in intellectual property law, an excellence in championing clients’ intellectual property rights, ready to serve in a broad range of intellectual property needs, and with a bright future of tirelessly helping the world’s most important companies and individuals meet their goals.

1920 – 1970

  • The firm was founded in July, 1920. Firm clients gain their first patents through firm services, including those patents numbering just above 1,000,000. The clients of the firm, many of whom are farmers, sometimes pay for services with produce and crops.
  • Firm lawyers take their first patent infringement lawsuit to a successful trial, in the 1920s.
  • The firm opens offices in Chicago, in 1937. Representative clients include Honeywell, Lenox, and Meredith Publishing.
  • Sheldon Witcoff becomes perhaps the world’s first examiner of patent applications on electronic computers, in the U.S. Patent Office, in 1949.
  • The firm’s lawyers prove that inventions can be both patented and copyrighted, in the United States Supreme Court, in Mazer v. Stein, in 1954.
  • A firm lawyer becomes Chief Patent Counsel of General Motors Corporation for seventeen years, in 1955. The firm begins a representation of General Motors Corporation in patent litigation that continues through the present.
  • Washington, D.C. offices open in 1960.
  • Firm lawyers prove that the public has the right to make products for themselves where the products were not patented, in the face of any state unfair competition law to the contrary, in Sears, Roebuck & Co. v. Stiffel Co., in 1964.
  • Lawyers of the firm pioneer the use of computers in pretrial discovery, litigation document management, and in the courtroom, in 1968.

1970 – 1990

  • In an unprecedented nine month long trial, perhaps the longest patent trial ever, lawyers of the firm prove John Atanasoff is the inventor of the first electronic computer, the ENIAC, changing the course of the history of invention, in 1973.
  • The firm elects its first Asian-American partner, in 1974.
  • Don Banner is sworn in as Commissioner of the United States Patent and Trademark Office, in 1978.
  • The firm’s clients gain their first biotechnology patent, through the services of firm lawyers, in 1979.
  • Lawyers of the firm prove life forms are patentable in the United States Supreme Court, in the Diamond v. Chakrabarty case, in 1980.
  • The firm elects its first woman partner, in 1980.
  • The firm is among the first law firms to establish a lawyer retirement plan, eliminating “unfunded” plan issues, in 1980.
  • Firm lawyers present a mandamus petition to the newly established Federal Circuit, allowing the Court to establish mandamus powers over its cases, in In re Snap On Tools, in 1983.
  • Firm lawyers present a “fraud on the Patent Office” case to the newly established Court of Appeals for the Federal Circuit, establishing the Court’s seminal decision on inequitable conduct, in J.P. Stevens & Co., Inc. v. Lex Tex Ltd., Inc., in 1984.
  • The firm opens an office in Boston, MA, in 1985.
  • Banner & Witcoff elects its first African-American partner, in 1989.
  • Lawyers of the firm win patent infringement litigation for Amgen, launching the biotechnology industry’s intellectual property rights, in 1989.

1991 – 2000

  • The firm website, now at www.bannerwitcoff.com, debuts in 1991.
  • In 1991, Donald Banner and Joseph Potenza help establish the Giles S. Rich American Inn of Court, part of the American Inn of Courts, and the first Inn of Court dedicated to intellectual property law, and guiding principals of professionalism, ethics, civility, and legal skills in the area of intellectual property.
  • Joseph Potenza Chairs the Science & Technology Law Section of the American Bar Association, one of the fastest growing and highly recognized Sections of the ABA, from 1993-1994.
  • The firm’s clients gain their first method of doing business patent, in 1996. The firm has a long history of gaining method patents, including computer-implemented methods, from earlier years.
  • The firm’s clients file their first patent directly related to the Internet, in 1994.
  • The firm merges the practices of Allegretti & Witcoff and Banner, Birch, McKie & Beckett, in 1995, joining lawyers with a vision of a national intellectual property firm of premier capabilities.
  • Firm lawyers begin representation of Microsoft Corporation, in 1996.
  • Firm lawyers begin representation of General Electric Corporation, one of a few approved intellectual property boutiques to do so, in 1996.
  • The firm adopts the name Banner & Witcoff, establishing a permanent national name, in 1996.
  • Firm lawyers appeal concerning patent claim “means” clauses, resulting in precedent in interpretation of these clauses, in Greenberg v. Ethicon Endo-Surgery, in 1996.
  • Firm offices open in Portland, Oregon, in 1997.
  • The firm begins unprecedented years of growth and success, in 1997.
  • Client Nike is awarded U.S. Design Patent No. 400,000, a patent gained by lawyers of the firm, on a Michael Jordan athletic shoe, in 1998.
  • Firm lawyers establish the first-ever patent trial practice class for the National Institute for Trial Advocacy, in 1997. Firm lawyers begin teaching patent trial practice to other lawyers at Georgetown University, John Marshall Law School, IIT Chicago Kent College of Law, and others. Firm lawyers also begin teaching Master Classes on Appellate Practice with Federal Circuit Judge Paul Michel. Firm lawyers teach IP courses to law students at a number of schools
  • In 1998, the firm becomes title holder of “most U.S. design patents procured in a calendar year.”
  • The firm’s clients gain three thousand patents over a five year period through the firm’s services, in 1998 through 2002.
  • The firm’s first woman board member serves at the firm, beginning in 1999.
  • Firm clients gain their first patent with a number above six million, indicating six million patents have issued in the United States, in 1999. Within three years, firm clients gain their first patent with a number of nearly six million five hundred thousand, reflecting the United States issuing patents at the unprecedented pace of a million every six years.

2001 – PRESENT

  • The firm becomes the world’s all-time leader in gaining design patents for clients after pioneering the first ever “Rocket Docket” for design patents, in 2001.
  • Mark T. Banner Chairs the Intellectual Property Section of the American Bar Association from 2002-2003.
  • Banner & Witcoff is recognized and cited in The American Lawyer as being an “IP America’s Dream Team,” in September 2002.
  • Firm lawyers write the first ever NITA patent law commentaries, beginning in 2001. The firm also contributes critical chapters on litigation to the ABA Patent Litigation Strategies Handbook, PLI Patent Litigation, and Globe Building and Enforcing Intellectual Property Value, in 2001–2.
  • Lawyers of the firm host a nationwide ABA teleconference on the Festo case, in 2002. Firm lawyers also continue to speak at numerous bar conferences and seminars.
  • Lawyers of the firm make cutting edge use of the Digital Millennium Copyright Act, to stop offensive Internet websites, in 2002.
  • Banner & Witcoff is recognized by IP Worldwide as a “Leader of the Pack” in the 2002 Almanac.
  • Banner & Witcoff is named a top ten firm by Fortune 250 companies in IP Law & Business‘ ranking “Who Protects IP America” in 2003.
  • In 2004, Donald W. Banner is awarded the Lifetime Achievement award by the Sedona Conference, which brings together leading jurists, lawyers and academics in the intellectual property field to discuss industry issues.
  • Corporate Counsel lists Banner & Witcoff as “Most Wanted” by companies for intellectual property work in 2004.
  • In 2005, the National Inventors Hall of Fame awards Donald W. Banner with a Lifetime Achievement award.
  • In 2005, the firm prosecutes its 2000th design patent to issuance since 1995. This is a first among all law firms during this period.
  • In its fourth annual “Who Represents America’s Biggest Companies” survey of Fortune 250 companies, Corporate Counsel named Banner & Witcoff as one of the top ten firms in the United States mentioned for patent prosecution and litigation matters. (September 2005).
  • In 2006, Donald W. Banner is inducted into Intellectual Asset Management’s IP Hall of Fame.
  • The firm broke the U.S. design patent procurement record consecutively, in 2006 and 2007.
  • The firm announced the inaugural recipients of the Donald W. Banner Diversity Scholarship, in April of 2008.
  • The firm celebrated its 90th anniversary in 2010.
  • Darrell G. Mottley was inaugurated as President of the D.C. Bar and began his term as the 40th President of the D.C. Bar in 2011.
  • The American Bar Association’s Section of Intellectual Property Law (ABA-IPL) confirmed Joseph M. Potenza to serve as Section Chair-Elect in 2011. Following this role, Mr. Potenza will serve as Chair of the ABA-IPL Section during the 2012-13 term.
  • Joseph M. Potenza was elected as the American Bar Association Section of Intellectual Property Law (ABA-IPL) Representative to the ABA House of Delegates in 2014. He will serve a three-year term, expiring in 2017.
  • Banner & Witcoff became the first law firm to exceed 1,000 U.S. design patent grants in a single year in 2017.
  • Banner & Witcoff was recognized by Managing Intellectual Property for filing the most inter partes review petitions in the first half of 2017.
  • Banner & Witcoff was recognized by Law360 as one of the law firms filing the most trademark lawsuits over the second quarter of 2017.
  • Joseph M. Potenza was recognized as an “IP Trailblazer” by National Law Journal in 2017.