Jeanne M. Gills

Partner

Back

Jeanne M. Gills

Partner

[email protected]

Chicago 312.832.4583

Sectors

Practice Areas

Education

The University of Chicago Law School (J.D., 1994)
Michigan State University (B.S., with honors, 1991)
- Electrical engineering

Admissions

Illinois
U.S. Court of Appeals for the Federal Circuit
7th U.S. Circuit Court of Appeals
Various Federal District Courts
U.S. Patent and Trademark Office

Jeanne M. Gills’ unparalleled commitment to advocating for her clients, combined with her ability to formulate solutions at a deeply strategic level, has earned her a national reputation in intellectual property litigation and for crafting her clients’ overall IP strategy. She brings that same thought leadership to her role as a member of the firm’s Compensation Committee, her role as vice chair of the Intellectual Property Department (leading strategic marketing and business development), and service on the firm’s Manufacturing Sector Advisory Board. Jeanne is also a former member of the firm’s Management Committee.

As an IP partner with an electrical engineering background, Jeanne’s practice exists at the intersection of law and science. Jeanne acts as lead trial counsel in complex patent, trade secret, trademark, copyright, and unfair competition litigation and appeals — including USPTO post-grant proceedings — in diverse industries ranging from electronics to fashion to biotechnology. Her trial experience includes “bet the company” cases with several hundreds of millions of dollars at stake. She has been lead counsel in more than 25 PTAB proceedings, having handled IPRs, CBMs, and rare derivation proceedings, including successful defense of several PTAB decisions before the Federal Circuit. In addition to her IP litigation prowess, Jeanne is respected for providing high-value strategy development and risk mitigation counsel in transactional matters where a company’s bottom line is IP-driven. Clients appreciate Jeanne’s ability to “read a whole situation and apply her depth of knowledge on strategies, from litigation to suggestions for negotiations.”

“She’s borderline genius on some of the ideas and approaches she takes with enforcement, as well as being really knowledgeable on litigation trends. She can see every approach or attack or weakness, and she strategizes.”

– Client testimonial
Thomson Reuters “Stand-out Lawyer” award nomination

Jeanne is committed to advancing others and regularly utilizes her connections to help those around her. Her Foley-formed “Team Impossible” — comprised of attorneys, paraprofessionals, and staff spanning the firm’s multiple offices — has as its motto: “Impossible is nothing when we support each other professionally and personally.” A colleague recently said, “Jeanne is a true, trusted advisor,” not just for young, up-and-coming lawyers, but also the most senior attorneys and executives who bend her ear for career advice. She is a staunch champion of diversity, equity, and inclusion in the legal profession and founded Foley’s African American Attorneys Affinity Group, the Black Patent Network, and the Chicago Black Partners Alliance.

Representative Matters

Litigation

Led ITC patent trial on automotive technology – In re Certain Multi-Stage Fuel Vapor Canister Systems and Activated Carbon Components Thereof (Inv. No. 337-TA-1140)
Defended Fashion Nova against Versace when accused of copying the gown worn by Jennifer Lopez at the 2000 Grammys and other designs (case settled two days before trial)
Led jury trial on engine technology licensing issue (TAS v. Cummins)
Led jury trial on multiple patents covering genetically engineered corn (DeKalb v. Pioneer)
Lead counsel in several hundred IP litigation matters and disputes, including handling of cross-border IP disputes and conducting of discovery abroad throughout Europe, Singapore, and Japan
Lead counsel in over 25 PTAB proceedings, having handled IPRs, CBMs, and rare derivation proceedings, including defense of several PTAB decisions before the Federal Circuit (see, e.g., IPR2013-00178and IPR2013-00578)
Represented Groupon, Inc. in a patent infringement case involving five business method patents related to targeting advertising and providing incentives to users in a network. We prevailed in obtaining institution of five related covered business method (CBM) proceedings. On appeal, the Federal Circuit affirmed four out of the five cases. In the fifth case, the court reversed on one issue but affirmed on an independent ground, still invalidating the vast majority of claims in the patent. The panel denied the patent owner’s request for rehearing and the parties settled with a favorable outcome for Groupon. Groupon, Inc. v. Blue Calypso, LLC (CBM2013-00033, 00034, -00035, -00044, and -00046)
Renewable Energy Group was locked in ongoing patent disputes against Neste, a Finnish renewable energy company, since 2012 through two district court cases, an inter partes reexamination, and five IPRs. In the prior cases, the Foley team invalidated every original claim of each challenged patent. In the most recent round, the Foley team filed two IPRs on behalf of REG on renewable oil process patents, and both were instituted on February 19, 2019. Final Written Decision (IPR2018-01374 on Feb. 19, 2020) – Determined some challenged claims unpatentable and construing remaining claims to advantage of Foley’s client; IPR2018-01375 on Feb. 18, 2020 – Determined all claims unpatentable; granting Patent Owner’s motion to amend for claims readily. REG Synthetic Fuels, LLC v. Neste Oyj f/k/a Neste Oil Oyj (IPR2018-01374 and -01375)
Represented Unilever in IPRs involving complex shampoo formulations. The IPRs were transferred to Foley after mixed institution decisions from the PTAB. For the two IPRs on which trial was instituted, patent owner (Procter & Gamble) filed four expert declarations in support of patentability with its formal response. Foley filed replies and a reply expert declaration, and argued for Unilever at the combined oral hearing. The PTAB final written decisions found all instituted claims unpatentable, and the co-pending litigation settled soon thereafter. Conopco, Inc. bda Unilever v. The Procter & Gamble Company (IPR2013-00505, -00509, IPR2014-00506, -0507, and -0628)
Represented one of the largest independent pediatric research centers in the U.S. in a trade secret and breach of contract case over biofilm technology in federal district court and a rare derivation proceedings at the U.S. Patent and Trademark Office; both matters were settled favorably for our client
Lead counsel in numerous contractual disputes concerning IP rights and the theft or use of IP by a company’s former employees, business partners, and/or independent contractors
Lead counsel in numerous TTAB and UDRP matters

Transactional/Strategy

Led IP side of potential US$4bn acquisition in power technology space
Led IP side of US$1.2bn deal involving the spin-out of a company in the fuel systems and aftermarket business
Led IP side of US$1.2bn deal involving the creation of two JV entities (one in the U.S. and one in Switzerland) on behalf of power technology companies
Led multi-million-dollar division of patent/technology assets for Kraft Foods’ 2012 split into Kraft Foods and Mondelēz

Counseling/Pre-Litigation Dispute Resolution

Resolve copyright ownership, use, and licensing disputes, particularly in the areas of computer software and associated documentation, as well as use of audio and video content online
Advise clients on product configuration trade dress, color as a trademark, design patent, and utility patent protection for consumer and industrial products
Counsel clients on IP holding companies, including how to maximize value from an IP portfolio when certain assets are likely to be the subject of IP litigation

Awards and Recognition

United Inventors Association Inspire Top 100 list of 2023
Stand-out Lawyer – Thomson Reuters (2023)
Business Leader of Color, Chicago United (2021)
Notable Women in Law, Crain’s Chicago Business (2020)
Lawyers of Color Power List (2020)
The Best Lawyers in America®
- Food & Beverage Law (2015-present)
- Litigation – Intellectual Property (2017-present)
IAM Patent 1000 – The World’s Leading Patent Practitioners, (2012-present)
Peer Review Rated as AV Preeminent®, the highest performance rating in Martindale-Hubbell® Peer Review Ratings™ system
Local Litigation Star – Benchmark Litigation (2018)
Top 250 Women in Litigation – Benchmark Litigation (2017)
Managing IP
- IP Stars (2013-present)
- Top 250 Women in IP (2013)
Illinois Super Lawyers® (2005-2006, 2008-present)
Chicago’s Most Influential Minority Lawyers – Crain’s Chicago Business (2017)
The Legal 500 U.S.
- Patent Licensing and Transactional (2014-2015)
- Patent Litigation/Trade Secret Litigation (2007, 2010)
Most Influential Black Lawyers – Savoy (2015, 2022)
Leadership Excellence in the Law Award – National Diversity Council (2014)
Leading Lawyers – Patent Law (2012-present)
LawDragon – 3000 for IP (2011)
The Nation’s Best Advocates: 40 Lawyers Under 40 Award – NBA & IMPACT (2010)
Who’s Who in Black Chicago (1st/3rd eds)
America’s Top Minority IP Partners – AIPLA & MCCA (2003)

The Illinois Supreme Court does not recognize certifications of specialties in the practice of law and no award or recognition is a requirement to practice law in Illinois.

Professional Memberships

American Intellectual Property Law Association
The American Bar Association
International Trademark Association
The Chicago Bar Association
National Bar Association
Corporate Counsel Women of Color
Minority Corporate Counsel Association
Intellectual Property Law Association of Chicago
Black Women Lawyers’ Association of Greater Chicago
Cook County Bar Association

Community Involvement

Chicago State Foundation – director of the board and member of the Investment Committee
The Chicago Network – member
Illinois Campaign for Political Reform – past board member
Art Institute of Chicago – past member, Evening Associates Board
Links Unlimited – past mentor for high school students

Select Presentations and Publications

Jeanne has authored and regularly updates a chapter on Experts for the Patent Litigation Strategies Handbook (BNA Books). She is also frequently quoted by publications such as Law360, Managing Intellectual Property, BNA’s Patent Trademark & Copyright Journal, SCOTUSblog, and The Wall Street Journal. In addition, she regularly presents seminars and publishes on a variety of IP topics.

General Counsel Bootcamp – IP Sections (multiple)
“Artificial Intelligence: Recent Issues & Trends” (Presenter, Lavender Law IP Institute, 7/23)
“Email Will Be the Death of You: Best Practices for Protecting Privilege” (Client CLE, 10/22)
Patent GC Bootcamp (Client CLE, 4/22)
“Justices Craft Their Own Remedy for Violation of Constitution’s Appointments Clause” (SCOTUSblog, 6/21)
“Justices Scale Back “Unreviewable Authority” of Administrative Patent Judges” (SCOTUSblog, 6/21)
“Ready to Respond: A Roadmap for Diverse Attorneys to Serve on Corporate Boards” (CMCP Virtual Seminar, 3/21)
“Justices Appear Conflicted About Status of Administrative Patent Judges” (SCOTUSblog, 3/21)
“Justices To Consider Appointments Clause Challenge To Administrative Patent Judges” (SCOTUSblog, 2/21)
“General Counsel Bootcamp—Intellectual Property” (Client CLE, 2/21)
“Ready to Respond: A Roadmap for Diverse Attorneys to Serve on Corporate Boards” (CMCP Virtual Seminar, 3/21)
“General Counsel Bootcamp—Intellectual Property” (Client CLE, 2/21)
“Diversity & Inclusion: Beyond the Boardroom” (F&L National Director’s Institute, 11/20)
“Knowing When and How to Pivot 2.0” (Chair, F&L 16th Annual IP Conference, 10/20)
“Elevate: How to Breakthrough Your Inner Glass Ceiling & Reclaim Your Power to Lead” (CCWC 16th Annual Conference, 9/20)
“Recent Developments in Patent Law & Best Practices with Patent Opinions” (Client CLE, 6/20)
“2019 PTAB Year In Review” (F&L Webinar, 1/20)
“When and How to Pivot” (Chair, F&L 15th Annual IP Conference, 10/19)
“Advanced, Patent Litigation Seminar (Chair, PLI, Chicago, 2009-2018)
“Proving and Guarding the Real Economic Value of IP” (Chair, F&L 14th Annual IP Conference, 9/18)
“Trade Secrets Protection, Enforcement, and Litigation” (Sandpiper Partners LLC, 6/18)
“Diversity & Inclusion” (Law Bulletin Ethics Seminar, 6/18)
“Top Ten Tips for a Successful Mediation in Intellectual Property Cases” (AIPLA Annual Meeting Presentation and Article, 10/17)
“Forging Ahead: Strategies for the New Unknown” (Chair and Speaker, F&L 13th Annual IP Conference, 10/17)
Chicago Black Partners Alliance, Marshall Movie Premiere Event (10/17)
“Career Not Moving Fast Enough? 10 Sure-Fire Ways to Ignite Your Passion and Career!” (CCWC, 9/17)
“Current and Emerging Issues Related to Patents” (Client CLE, 3/17)
“Get Ready Now! Boosting Your IP Fitness for the Next Business Cycle” (Chair, F&L 12th Annual IP Conference, 9/16)
“Women of Color and Diversity and Inclusion at Firms and in Corporations: Working Group to Develop Solutions for 2017” (CCWC, 9/16)
Defend Trade Secrets Act: The Latest in Trade Secrets Developments (Podcast, 7/16)
“In-House Counsel Panel: Is the Billable Hour Dead?” (NBA Annual Conference, 7/16)
“The Ins and Outs of Equity Partnership” (The Chicago Committee, 7/16)
“What’s Reasonable? Protecting And Enforcing Trade Secrets” (AIPLA 2016 Spring Meeting)
- Presentation: What’s Reasonable? Protecting And Enforcing Trade Secrets
- Article: What’s Reasonable?—Protecting And Enforcing Trade Secrets “IP Litigation Preparedness & Hot IP Topics” (Client CLE, 3/16)
“Check, Raise, or Fold: The Risky Business of IP” (Chair, F&L 11th Annual IP Conference, 9/15)
“Trade Secret Protection and Enforcement in the U.S.” (NBA Annual Conference, 7/15)
“Patents/Trade Secrets Overview” (Client CLE, 4/15 and 7/15)
“What’s next? Emerging technologies your clients are talking about” (ACC Seminar, 3/15)
“Hot Topics in IP and Advertising/Promotions” (Client CLE, 2/15)
“Patent Litigation: Jury Considerations” (Practical Law Webinar, 1/15)
“Strategies for Winning NPE Litigation” (Client CLE, 11/14)
“IPx: Evolution to Revolution” (Chair, F&L 10th Annual IP Conference, 9/14)
“Right-sizing the Approach in Defending Against NPE Claims” (MIP International Women’s Leadership Forum, 6/14)
“Supreme Court Relaxes ‘Exceptional’ Case Standard in Pair of Fee-Shifting Patent Cases” (Article, IP Magazine, 5/14)
“Apple v. Samsung: Implications for Patent Infringement Cases, Injunctions and Sales Ban” (dri IP Seminar, 5/14)
“US Supreme Court Rules That Patentee Maintains Burden of Proving Infringement in Actions Brought by Licensee,” (Article, Licensing Journal, 3/14)
“Board Oversight of IP Strategy” (F&L National Director’s Institute, 11/13)
“How Bad Is It, Counselor?…What Do You Mean, “I Don’t Know?!?” Evaluating Your Litigation Exposure” (ACC Annual Conference, 10/13)
“IP Issues at the Frontline—Offensive & Defensive Strategies That Win the Game” (Chair, F&L 9th Annual IP Conference, 10/13)
“User Driven IP 4.0: High Stakes. High Rewards” (Chair, F&L 8th Annual IP Conference, 10/12)
“Hot Topics in IP (in light of Apple v. Samsung & AIA)” (BWLA Presentation, 10/12)
“IP Law Update (covering recent Trade Dress/Patent Decisions & AIA)” (Client CLE, 9/12)
“An Overview of US Patent Reform (The America Invents Act)” (Client CLE, 11/11)
“Patent Wars: The Game Show-Prosecutors vs. Litigators” and author “In Drafting A Joint Development Agreement, Who Should Own The Jointly Developed IP?” (AIPLA Annual Meeting, 10/11)
“The Exponential Speed of Innovation: Is IP Driving Your Business?” (Chair, F&L 7th Annual IP Conference, 9/11)
“Microsoft v. i4i: Supreme Court Upholds ‘Clear and Convincing Standard’—Is It Really Business As Usual?” (PLI, 6/11)
“Winning a Game of Inches: Gaining Momentum Through IP” (Chair, F&L 6th Annual IP Conference, 10/10)
“Patenting Business Methods and Other Recent Developments” (Client CLE, 1/10)
“Being A Partner” (F&L Presentation, 1/10)
“What IP Issues Keep General Counsel Up At Night?” (Chair/Panelist, F&L 5th Annual IP Conference, 10/09)
“Extracting Value from IP in the Reform Era: What It Takes to Build and Protect Your Core Assets in Uncertain Times” (Argyle Corporate Leadership Forum, 9/09)
“Networking For Success” (F&L Mentor/Mentee Seminar, 6/09)
“Emerging Legal Trends In Patent Law” (MCCA CLE Expo, 3/09)
“KSR: Pharmaceutical Cases Revisited 18 Months Later” (BNA/ABA IP Section Conference, 10/08)
“IP Gone Wild?” (Moderator and Panelist, F&L 4th Annual IP Conference, 9/08)
“Strategic Patent Litigation—Venue Selection, Use of IP Injunctions & Defenses” (IP Section Mtg. NBA Annual Conference, 7/08)
Pre-Conference Workshop on “Creating & Managing Patent Portfolios” (2nd Annual IP Summit for Wireless Tech & New Media, 6/08)
“IP Litigation in the 21st Century—A Look at In re Bilski, Post-KSR Litigation Strategies, & Stats on Best Patent Defenses” (Northwestern Journal of Technology & IP Annual Symposium, 4/08)
“At the Razor’s Edge: Prosecuting and Defending Against Patent Infringement Claims Post-KSR” (F&L Legal News: Medical Devices Newsletter, 1/08)
“Strategic Venue Selection & Use of IP Injunction” (F&L Litigation Conference, 12/07)
“Navigating The Changing Tides of Patent Litigation” (Martindale Hubbell/Lexis Nexis Counsel2Counsel Forum, 11/07)
“Views from the Bench: Remedies in IP Litigation Cases—A Roundtable of Judges from the Southern District of New York” (Chair/Panelist, F&L 3rd Annual IP Conference, 10/07)
“Unexpected Results? —The Litigation Landscape Post-KSR in Pharmaceutical Cases” (BNA/ABA IP Section Conference, 10/07)
“Avoiding a Career Silo: Understanding and Converting Your Value” (10th Annual CYOC Career Development Conference, IP Law Pre-Conference 9/07)
“Hot Topics in Trademark Law” (DuPont Legal Conference, 9/07)
“KSR v. Teleflex: Its Practical Implications for Patent Practice” (IPO Annual Meeting, 9/07)
“KSR International Co. v. Teleflex Inc.—Pharmaceutical Prosecution & Litigation Strategies” (Client CLE, 6/07)
“Taking A Company’s IP To The Next Level” (Client CLE, 6/07)
“Use of Expert Witnesses in Patent Litigation” (BNA/ABA Seminar, 11/06)
“Are Opinions of Counsel Still the Best Defense to Willfulness in IP (Patent & Trademark) Litigation” (F&L Corporate Counsel Seminar, 10/06)
“Battling Global IP Piracy & Counterfeiting” (Chair, F&L 2nd Annual IP Conference, 9/06)
“Surfing Trademark Issues on the Web” (F&L White Paper, 9/06; Corporate Legal Times and F&L Webinar, 3/05)
“Crafting an Effective Patent Invalidity Opinion—Is it the Last Bastion of Defense?” (PLI, 2003-2006; IP Litigator article, 6/04)
“Being and Finding Good Mentors” (BWLA, 3/06)
“Trade Secret Protection in the 21st Century” (F&L Litigation Conference, 12/05)
“The Dilution Dilemma—Litigating Dilution Claims and the Trademark Dilution Revision Act of 2005” (ABA/Navigant Consulting IP Roundtable, 12/05)
“Seize the Day: Hearing an Ex Parte Seizure Order for Copyright and Trademark Counterfeiting” (AIPLA Annual Meeting, 10/05)
“IP Roundtable on Key Patent Appellate Cases, including Blackberry, Lemelson, and Illinois Tool” (F&L Corporate Counsel Seminar, 10/05)
“Digital, Wireless & New Media Technologies—Is Your IP Future in the Right Hands?” (Chair/Founder, F&L 1st Annual IP Conference, 9/05)
“Discovery Issues in Patent Litigation” (PLI, 9/05)
“Internet-Related Trademark Litigation Issues & Trends” (INTA, 5/05)
“New Insights into IP Law in China”—Presenter on Trade Secret Protection (F&L Corporate Counsel Seminar, 3/05)
“Preparing to Initiate or Defend a Patent Lawsuit” (ABA, 10/04)
“IP Litigation: Avoiding the Money Pit” (Corporate Legal Times & F&L Webinar, 7/04)
“How Do You Measure Up? Metrics And Measurements for Law Departments” (Counsel to Counsel Forum, 2/04)
“How to Litigate in the Digital Decade” (Defendants’ Patent Counsel (doing damages expert cross-exam and closing argument) in Mock Trial Plenary Session involving patent and trademark infringement; AIPLA Mid -Winter Institute, 1/04)
“Bank One: Law Firm Diversity Symposium” (Panelist, 12/03)
“A Woman and Minority Perspective on Client Development” (CBA, 9/03)
“IP Litigation and Opinions — Using Litigation Knowledge to Advance Career Success” (NBA Annual Convention, 8/03)
“An Ounce of Prevention — Smart Patent Prosecution Can Minimize Litigation Oops” (Article, IP Litigator, 7/03)
“Avoiding Litigation Pitfalls through Effective Patent Prosecution” (Article, Corporate Counsel, 7/03; and ABA IP Seminar, 4/03)
“Getting Off To A Good Start — Drafting A Patent Application to Survive Prosecution and Litigation” (AIPLA Annual Meeting, 2002)
“An IP Litigation Perspective on Licensing” (PLI, 2001)
“Section 112 Cases and the Impact of Festo” (PLI, 2001)
Contributor, IPLAC Litigation Committee’s “Federal Circuit (2001 and 2002) Review of Markman Issues”