Robert H. Resis
Robert Resis has over 30 years of experience in successfully representing clients in a wide variety of intellectual property matters. Mr. Resis’ practice includes trial and appellate work. Mr. Resis was part of the trial team in Amgen Inc. vs. Chugai Pharmaceuticals, et al., a leading biotechnology patent case (including a significant role in preparing Amgen’s winning post-trial brief). Mr. Resis is recognized in the BTI Client Service All-Stars 2017 as one of just over 300 lawyers nationwide for superior client service – he was nominated by a global industrial manufacturing giant client for IP litigation. Mr. Resis is also listed in Leading Lawyers for his work in intellectual property law and patent law.
Mr. Resis’ accomplishments include the following:
In 2013-17, Mr. Resis assisted a large research and development organization in obtaining worldwide patents for processes for production of useful fuels from renewable sources.
In 2012, Mr. Resis requested for a large pharmaceutical client an inter partes reexamination against a patent asserted by a competitor. The Patent Office rejected all of the claims of the asserted patent in the reexamination, and in 2013, after Mr. Resis filed third-party requester comments, sustained the rejection of all claims in a Right to Appeal Notice. Thereafter, the competitor stipulated to dismissal with prejudice of its infringement suit against Mr. Resis’ client, thereby saving his client litigation costs and a trial. In 2015, the PTAB affirmed the rejection of all claims.
In 2012, Mr. Resis obtained for an ecommerce client a dismissal of Digital Millennium Copyright Act (DMCA), Lanham Act, and state claims that had been filed against it by another ecommerce business. In 2013, Mr. Resis obtained a dismissal of the DMCA claim and a copyright claim based on an asserted work that had been filed in an Amended Complaint. The case settled shortly after the court’s dismissal of claims of the Amended Complaint.
In 2011, Mr. Resis requested ex parte reexamination for a client against a patent that was later asserted by a competitor. The Patent Trial and Appeal Board affirmed the Examiner’s rejection of all of the claims of the asserted patent in the reexamination. The competitor did not file a further appeal, and Mr. Resis’ client can practice all of the claims of the asserted patent without any liability risk.
In 2010, Mr. Resis prepared pretrial and trial papers to help obtain a jury verdict of over $19 million in patent infringement damages for a firm client against a competitor. The jury verdict was upheld by the district court after denying the competitor’s post-trial motions. Thereafter, the case settled favorably for the firm client.
In 2010, after limited discovery, Mr. Resis obtained an agreed order of dismissal with prejudice of a non-practicing entity’s claims of patent infringement that had been filed against a firm client in connection with its on-line order and delivery business. The firm client did not pay the NPE any money and did not take a license.
In 2009, Mr. Resis requested for a transportation client an ex parte reexamination against patent claims previously asserted by the practicing patent owner against a competitor. The Patent Office rejected all of the claims in Mr. Resis’ request. In 2013, the Patent Trial and Appeal Board sustained the rejection of all claims in Mr. Resis’ request, and the practicing patent owner did not file a further appeal. Thereafter, the Patent Office issued a Reexamination Certificate that canceled all of the claims in Mr. Resis’ request, and Mr. Resis’ client can practice the canceled claims without risk of being sued for infringement of those claims.
In 2009, Mr. Resis successfully defeated a motion by an accused infringer to stay a case pending inter partes reexamination. The case settled shortly after the motion to stay was denied.
In 2009, Mr. Resis prepared pre- and post-trial papers in helping to obtain and maintain a jury verdict in favor of a firm client that all the patent claims asserted by the opposing party were invalid for obviousness.
Mr. Resis takes pride in successfully representing clients against larger, well-financed opponents. For example, Mr. Resis achieved the successful enforcement of a patent in Texas for a small startup company against a multimillion-dollar defense effort by the primary and decades-long vendor in the industry. He achieved this success within 18 months of filing suit and despite summary judgment and patent reexamination efforts by the defendant. Mr. Resis’ firm prosecuted the successfully enforced patent. Southwest Die Corp. v. Ontario Die Company Limited, Civil Action No. EP-01-CA-0204-PRM (W.D. Tex.).
Mr. Resis is also experienced in the procurement, counseling and licensing aspects of intellectual property rights. He has successfully prosecuted patents in a variety of arts, including the chemical, medical device, and pharmaceutical arts. He has also effectively implemented the post-grant review procedures of the Patent Office to the benefit of the firm’s clients, including clients involved in litigation. Mr. Resis also assists clients with strategic planning and patent-portfolio management.
Mr. Resis received his B.S. in Chemical Engineering from the University of Illinois. Between college and law school, he worked as a refinery process engineer at Chevron U.S.A. Mr. Resis earned his J.D. from Northwestern University and is admitted to practice before the U.S. Supreme Court, the U.S. Court of Appeals for the Federal Circuit, the Supreme Court of Illinois, the Northern District of Illinois and numerous other U.S. District Courts. He is registered to practice before the U.S. Patent and Trademark Office, and is a member of several professional associations, including the Intellectual Property Owners Association, the Intellectual Property Law Association of Chicago (chair of the Amicus Committee) and the PTAB Bar Association (member of the Program Committee).
Mr. Resis is the author of “Preliminary Relief in Patent Infringement Disputes,” published by the ABA in 2011. Mr. Resis is a contributing author of the book “Patent Claim Construction in the Federal Circuit,” published by the Intellectual Property Law Association of Chicago (2012, 2015 and 2016 Editions). Mr. Resis is also the author of numerous articles on intellectual property law, including “Lessons to Learn from Post-KSR Pharmaceutical Obviousness Decisions,” ABA Landslide (Nov./Dec. 2009 Vol. 2, No. 2), “Reducing the Need for Markman Determinations,” John Marshall Law School Review of Intellectual Property Law (Fall 2004) (his proposal to require patent applicants to declare during prosecution whether they are relying on 35 U.S.C. 112, paragraph 6 and to identify the corresponding structure, material or acts for performing the specified function was adopted by the U.S. Patent Office in its 2006 rules for Accelerated Examination), “History of the Patent Troll and Lessons Learned,” ABA Intellectual Property Litigation (Winter 2006), and “Solutions for Reducing Patent Application Pendency,” John Marshall Law School News Source (Spring 2006).
Mr. Resis is Vice President of the West Northfield School District 31 Board of Education. He was re-elected to a second four-year term in April 2017.
Mr. Resis practices in the Chicago office of Banner & Witcoff, Ltd., where he has spent his entire legal career.
Ten South Wacker Drive
Chicago, IL 60606-7407
B.S.Ch.E. 1980, University of Illinois
J.D. 1986, Northwestern University
Supreme Court of Illinois
U.S. Circuit Court of Appeals for the Federal Circuit
U.S. District Court for the Eastern District of Michigan
U.S. District Court for the Northern District of Illinois
U.S. District Court for the Northern District of Illinois, Trial Bar
U.S. Supreme Court