James M. Amend Chief Circuit Mediator

Former Partner, Intellectual Property, Kirkland & Ellis LLP, Chicago, Illinois (1968–2006)

Consulting Professor, Patent and Intellectual Property Law, Stanford University Law School (1996–1997)

Education

University of Michigan, B.S. (Mechanical Engineering) with High Honors, 1964 Outstanding Senior Engineer, Tau Beta Pi Engineering Honorary

University of Michigan, J.D., magna cum laude, 1967 Order of the Coif; Editor, Michigan Law Review

London School of Economics, Fulbright Scholar (British Unfair Competition Law), 1967-68

Author

Patent Law - A Primer for Federal District Court Judges, 1st edition published by the Berkeley Center for Law and Technology, 1998, 2nd edition published 2006

Representative Clients and Cases

Patent

• American Cyanamid Company - Bernstein v. American Cyanamid Company (dispute over rights to patent for psoriasis treatment)
• Amoco Corporation - Mobil Oil v. Amoco (suit for infringement of patent relating to petrochemical processes)
• Baxter Laboratories - Smith v. Baxter Laboratories (dispute over rights to patent on drug to relieve pain from herniated discs)
• Caterpillar, Inc. - Caterpillar v. Detroit Diesel (serve as expert witness in patent infringement suit relating to cruise controls)
• Kraft Foods, Inc. - Alpine Lace v. Kraft (suit for infringement of patent relating to process for making low-fat cheese)
• Motorola, Inc. - Nilssen v. Motorola (suit for infringement of patents and theft of trade secrets relating to electronic ballasts for fluorescent lights)
• Pittway Corporation - Pittway Corporation v. Black & Decker (patent infringement action involving rechargeable flashlights); American Optical v. Pittway Corporation (patent infringement action involving closures for dispensing containers); Raber v. Pittway Corporation (patent infringement action involving smoke detectors)
• United States Gypsum - Georgia-Pacific v. United States Gypsum (suit for infringement of patents relating to reinforced dry wall panels) Trademark/Unfair Competition
• Blue Cross Blue Shield Association - Central Benefits Mutual Insurance Co. v. Blue Cross Blue Shield (obtained preliminary injunction against subsidiary of Member Plan using BLUE CROSS® and BLUE SHIELD® marks without license)
• California Cooler, Inc. - California Cooler, Inc. v. Loretto Winery, Ltd. (enforcement of rights in California Cooler trademark against infringement
)
• Chicago Board of Trade - Chicago Board of Trade v. Dow Jones (challenge to ability of Board of Trade to use Dow Jones Industrial Average as a basis for a stock index futures contract)
• Coca-Cola Co. - Stokely-Van Camp, Inc. v. Coca-Cola Co. (dispute over rights to use trademark Refresh for beverages)
• General Foods Corporation - General Foods Corporation v. Borden, Inc. (suit for infringement of General Foods' "Country Time" trademark by Borden's use of "County Prize")
• S.C. Johnson Company - S.C. Johnson Company v. The Drackett Company (challenge to misleading advertising claims)
• Motorola, Inc. - (obtain registration of mark “Flip Phone” for cellular telephones)
• National Football League Properties - National Football League Properties v. Consumer Enterprises; National Football League Properties v. Dallas Cap (enforcement of rights in names and emblems of NFL teams against unauthorized use on merchandise)
• Warner Bros. - Various Matters (enforcement of Warner Bros.' rights in cartoon and television characters against unauthorized use in cases throughout United States)

Other

• Amoco Corporation - Amoco Cadiz Litigation (case against Amoco regarding oil spill from Amoco Cadiz super tanker into English Channel)
• General Motors Corporation - Engine Switching Cases (challenge to GM's use of engines produced by Chevrolet division in Oldsmobiles)
• International Harvester Company - Dynamics Corp. of America v. International Harvester (claim that plans and facilities for manufacturing trucks sold to plaintiff were incomplete and erroneous)

Alternative Dispute Resolution Training and Experience

• Mediation Training, International Institute for Conflict Prevention and Resolution (“CPR”)
• Panelist, CPR Panel of Patent Neutrals ? Member, CPR International Commission on Patent Disputes
• Chairman, Expert Neutrals Panel, International Trademark Association (“INTA”)
• Chairman, INTA Task Force for the Training and Evaluation of Its Expert Neutrals
  Conduct training exercises for mediators
• Founder and Member, Lanham Act Mediation Panel for the Northern District of Illinois
• Special Master, Appointed to Conduct Markman Hearings, Eastern District of Wisconsin and the District of Arizona

Professional Activities

• Former Chairman - Copyright Subcommittee of ABA Litigation Section
• Author - Unfair Competition Section, Intellectual Property Law, published by Illinois Institute on Continuing Legal Education, 1982
• Author - Geographical Scope of Injunctions in Intellectual Property Cases, Trademark Reporter, 1987
• Speaker - at Patent Trial Practice Institute, and before Patent, Trademark and Trade Secret Litigation Institute, on intellectual property litigation techniques and strategy
• Speaker - at United States Trademark Association Forum on Trademarks in Corporate Transactions
• Speaker - at American Association of Public Opinion Research Forum on Use of Surveys in Intellectual Property Litigation
• Speaker - at ABA Patent/Trademark Section Meeting on Injunctions in Intellectual Property Cases

Community and Social Activities

Board Member and Former Chairman - Chicago Lawyers' Committee for Civil Rights Under Law