12.11.14 | Louis DiSanto

Louis DiSanto

Attorney

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Louis DiSanto assists clients in developing and leveraging intellectual property portfolios to achieve their business goals. He applies a value-added approach to help clients obtain complementary intellectual property assets and to strategically use their portfolios to earn competitive advantages in the marketplace. Louis represents category leaders and well-known brand owners in litigation, prosecution, and counseling matters. His matters involve diverse subjects and technologies that span the chemical, mechanical, electrical, and business method arts.

In his litigation and enforcement practice, Louis has served as lead counsel in complex intellectual property cases. He recently earned summary judgment of patent non-infringement and affirmance of the judgment by precedential opinion of the U.S. Court of Appeals for the Federal Circuit. The win was featured in Law360 and Bloomberg BNA. Louis also represents brand owners in trademark and trade dress actions in court and other forums to maintain brand integrity and defend their goodwill. He has also led multiple trade secret litigations on behalf of both plaintiffs and defendants. Louis believes that litigation and enforcement actions should be right-sized and tailored to achieve defined business goals.

Louis regularly counsels clients on steps to avoid litigation. He assists clients in the successful launch of new products and new brands by providing analysis and navigation of competitive intellectual property threats. Louis believes that most disputes should be avoided through adoption of best practices for due diligence and intellectual property clearance. He also believes that the best defense includes a strong offensive capability based on the client’s own intellectual property portfolio.

In his prosecution and portfolio counseling practice, Louis assists clients in obtaining and maintaining utility patents, design patents, trademarks, trade dress, copyrights, and trade secrets that yield tangible competitive advantages. His counseling practice includes transactional work on valuating, acquiring, and licensing intellectual property rights. Louis believes that intellectual property assets must provide a return on investment and that cost management is a critical aspect of maintaining a portfolio that yields value. He is skilled at devising strategies to obtain a full spectrum of complementary intellectual property assets while limiting clients’ costs in creating and managing their portfolios.

Louis’s practice also includes pro bono representation of low-income families in court. Since 2005, he has worked with the Lawyers’ Committee for Better Housing’s (LCBH) to provide low-income families with legal representation to defend against wrongful evictions and otherwise navigate the eviction court system. LCBH honored Louis as the recipient of the “Volunteer Attorney of the Year Award” for his dedication and value as a volunteer attorney. Currently, he serves on the board of directors of LCBH.

Exemplary Litigations

  • Sloan Valve Co. v. Sloan Indus., LLC, No. 1:17-CV-4496 (N.D. Ill.) (lead counsel in successful enforcement of flagship trademarks)
  • Phil-Insul Corp. v. Airlite Plastics Co., No. 8:12-CV-151, 201 WL 5107131 (D. Neb. Mar. 2, 2016), aff’d, 854 F.3d 1344 (Fed. Cir. 2017) (lead counsel in successful defense against patent infringement action, earning summary judgement of non-infringement and affirmance on appeal)
  • YETI Coolers, LLC v. Kaiser Group, Inc., No. 1:15-CV-725 (W.D. Tex.) (co-lead counsel in successful enforcement of trade dress rights)
  • YETI Coolers, LLC v. Great Am. Prods., Ltd., 1:15-CV-686 (W.D. Tex.) (successful enforcement of trade dress rights)
  • ConWay Freight, Inc. v. Ochoa, No. 1:12-CV-1291 (N.D. Ill.) (successful enforcement of trade secret rights)
  • ESCO Corp. v. Reddig Equip. & Repairs, Inc., No. 9:11-CV-150 (D. Mon.) (co-lead counsel in successful enforcement of patent rights)
  • Polyform, A.G.P., Inc. v. Airlite Plastics Co., 4:10-CV-43, 2010 WL 4068603 (M.D. Ga. Oct. 15, 2010) (co-lead counsel in successful defense against patent infringement action, earning transfer and dismissal of action)
  • Polyform, A.G.P., Inc. v. Airlite Plastics Co., No. 8:07-CV-397 (D. Neb.) (co-lead counsel in successful defense against patent infringement action, earning jury verdict of patent invalidity)
  • TronTech Licensing, Inc. v. Lexmark Int’l, Inc., 2:10-CV-218 (E.D. Tex.) (resolved patent infringement action on behalf of defendant)
  • Demeter Tech., LLC v. Lexmark Int’l, Inc., 2:10-CV-209 (E.D. Tex.) (resolved patent infringement action on behalf of defendant)
  • Tennessee Prod. Ctr., Inc. v. Eatsleepmusic Corp., No. 3:09-cv-159, 2009 WL 2852426 (M.D. Tenn. Sep. 1, 2009) (developed strategy that earned stay of litigation and subsequent settlement in successful defense of copyright infringement action)

Representative Clients Served & Sample Subject Matter of Representation

  • Sloan Valve Company (plumbing and sanitary devices)
  • YETI Coolers (specialty coolers, drinkware, and outdoor equipment)
  • Allstate Insurance Company (software and computer systems)
  • NIKE (polymer-based materials and sports equipment)
  • DSM Functional Materials (stereolithography equipment and polymers)
  • RTC Industries (retail fixtures and point of sale technology)
  • Airlite Plastics Co (insulated concrete forms and injection-molded products)
  • ESCO Corporation (wear parts for excavating equipment)
  • Lexmark International (software and computer systems)
  • Boeing (aeronautical devices and telecommunications)

Louis earned his Juris Doctor, cum laude, from the University of Illinois College of Law. There, he served as articles editor for the Journal of Law, Technology & Policy and editor of the Frederick Green Moot Court Competition. In addition, Louis served as a judicial extern for the Honorable E. Kenneth Wright, Presiding Judge of the First Municipal District of Cook County, Illinois. He earned his Bachelor of Science in Chemical Engineering from Michigan State University. As an undergraduate, Louis worked as a research assistant at the Michigan State University Plant Biotechnology Laboratory.

Louis draws on his experience as a research assistant at Nalco Chemical Company and as a pharmaceuticals manufacturing engineer at Abbott Laboratories, where he worked with a broad range of technologies. His research at the Nalco Chemical Company in the area of electrochemical devices led to the issuance of U.S. Patent No. 6,250,140, Method for Measuring the Rate of a Fouling Reaction Induced by Heat Transfer Using a Piezoelectric Microbalance, for which he is a co-inventor.

In his spare time, Louis enjoys the study of wine and making wine at home. He is an accredited Sommelier through the International Sommelier Guild.

Office

Ten South Wacker Drive
Suite 3000
Chicago, IL 60606-7407

T 312.463.5000
F 312.463.5001
E Emailldisanto@bannerwitcoff.com

Education

B.S. ChE. 1999, Michigan State University

J.D. 2005, University of Illinois

Bar Admissions

2005, Illinois

Court Admissions

Supreme Court of Illinois

U.S. Circuit Court of Appeals for the Federal Circuit

U.S. District Court for the Northern District of Illinois