Michael O. Warnecke
Michael's practice focuses on major patent litigation cases, including international patent, technology licensing and other intellectual property matters.
Michael Warnecke is of counsel in the firm's Patent Litigation practice. He has been a partner from 2007 to 2016 and has served as firmwide co-chair of the Patent Litigation practice from 2009 to 2015. He has been first chair on numerous patent litigation cases in which he represented companies such as Caterpillar Inc., Brunswick Corporation, MetLife and Mitsubishi Corporation. In one of the most significant cases of his career, Michael obtained successful damages and injunctive relief for Rockwell International on a major trade secret matter. The case was later affirmed on appeal where it garnered substantial national media attention for its innovative use of computer graphics to present evidence.
More recently, in August 2010, Michael was lead trial counsel in the Riddell v. Schutt case. This patent infringement case involved Riddell's significant football helmet technology developed to reduce concussions. The jury award of $30 million was the largest in Wisconsin history for a patent case.
In the 1990s, Michael was selected by the People's Republic of China trade delegation, led by Vice Premier Li Lanqing, to host a two-day seminar for American automotive and after-market companies, as well as the Chinese delegation on the legal aspects of doing business in China.
At the request of the Chinese government, he also provided advice on the redrafting of the 1984 Patent Act. Similarly, in 1993, he provided advice on the Unfair Competition Act, which was adopted in 1994.
Michael's extensive experience has led him to be retained as an expert witness in many litigation matters.
Prior to joining Perkins Coie, Michael was the chair of the Intellectual Property practice at Mayer, Brown, Rowe & Maw in Chicago.
Education & Credentials
Education
- The George Washington University Law School, J.D., 1967
- Purdue University, B.S., Mechanical Engineering, 1963
Bar and Court Admissions
-
Illinois
- Supreme Court of the United States
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the Second Circuit
- U.S. Court of Appeals for the Fifth Circuit
- U.S. Court of Appeals for the Seventh Circuit
- U.S. Court of Appeals for the Ninth Circuit
- U.S. District Court for the Northern District of Illinois
- Trial Bar of the Northern District of Illinois
Related Employment
- Mayer, Brown, Rowe & Maw LLP, Chicago, IL, Partner, 1996-2007
- Keck, Mahin & Cate, Chicago, IL, 1991-1996
- Neuman, Williams, Anderson & Olson, Chicago, IL, 1967-1991
- U.S. Patent and Trademark Office, U.S. Patent Examiner, Group 350, Washington, D.C., 1963-1967
Additional Languages
- Japanese
Professional Recognition
Listed in Chambers USA as "America's Leading Lawyer" for Intellectual Property, 2014-2024
Ranked by Chambers USA, as "Senior Statespeople," 2021-2024
Listed in Chicago Magazine as Top Attorneys In Illinois, 2016
Named the Best Lawyers "Lawyer of the Year" for Litigation - Patent, 2016
Listed in Chambers Global, "America's Leading Lawyers," 2014-2018
Recognized as an IP Star by Managing IP, 2013, 2014, 2016
Listed in Intellectual Asset Management Patent 1000, 2012-2019
Listed in Intellectual Asset Management Patent 1000, Litigation Silver Band, 2012-2014
American College of Trial Lawyers
Listed among the top ten Illinois 2008 Super Lawyers as published by Law & Politics
Listed in the Law Bulletin Publishing Company's Leading Lawyers Network as Illinois Leading Lawyer
Arbitrator for American Arbitration Association, Chicago
Mediator, Patent Infringement
Arbitrator, Patent Infringement, 1997
Arbitrator, Trade Dress Infringement, 1994
Participated as Chairman of arbitrator's panel for complex beer distributorship contract arbitration, 1989-1990
Listed in The Best Lawyers in America 2006-2021: Litigation - Intellectual Property; Litigation - Patent; Patent Law; Trademark Law
Listed as a "Super Lawyer" by Super Lawyers Magazine, 2005-2024
*The Supreme Court of Illinois does not recognize certifications of specialties in the practice of law and no certificate, award or recognition is a requirement to practice law in Illinois.
Impact
Professional Leadership
- American Arbitration Association, Panel of Arbitrators
- American Bar Association
Section of Patents, Trademarks & Copyrights
Arbitration & Other Alternative Procedures, Judiciary, and Inequitable Conduct & Antitrust Matters Committee - American Intellectual Property Law Association
- Bar Associations for the Seventh and Federal Circuits
- Chicago Bar Association
Section of Antitrust Law Committees: International & Foreign Law Committee
Former Chair, Patent, Trademark & Copyright Committee - International Patent and Trademark Association (AIPPI)
- Patent Law Association of Chicago
Federal Rules & Practice Committee
Trial Skills Subcommittee - American College of Trial Lawyers, Member
News
Professional Experience
Patent Litigation
Accuride International v. Knape & Vogt Manufacturing Company*
Represented defendant in patent infringement case involving cabinet slide mechanism. Heavily litigated, then settled.
Action Gaming Inc. and International Gaming Technology v. Alliance Gaming Corporation, et al.*
Represented International Gaming Technology in patent infringement case involving video poker games. Took over on appeal and won multi-million-dollar judgment for plaintiff.
Adventus Americas Inc., et al. v. ARS Technologies Inc.*
Represented defendant in patent infringement case involving a method for removing iron from soil. Settled.
AmSafe Inc. v. Aircraft Belts Inc.*
Patent infringement on inflatable seat belts. Successfully negotiated quick settlement on behalf of AmSafe Inc.
Caterpillar Inc. v. Deere & Company*
Represented Caterpillar in patent infringement case on a patent directed to friction-driven tractors. Deere's motion for summary judgment on noninfringement was reversed on appeal. Settled just before trial on favorable terms to Caterpillar.
Centillion Data Systems LLC v. Citizens Communications Company*
Represented defendant in case involving business method patent relating to data collection. Settled.
Joseph A. Gentiluomo v. Brunswick Bowling & Billiards Corporation, et al.*
Represented Brunswick in patent infringement case involving bowling ball technology. Bench decision on summary judgment. Judge found patent invalid and the Court of Appeals for the Federal Circuit affirmed.
George Zelinski, Jr. and Pinbreaker Inc. v. Brunswick Corporation*
Represented Brunswick in patent infringement case involving bowling ball technology. Bench decision on summary judgment. Judge found no infringement and the Court of Appeals for the Federal Circuit affirmed.
Medical Device Technologies Inc. v. C.R. Bard Inc.*
Represented Plaintiff Medical Device Technologies in patent infringement case involving biopsy needles. Successful in overturning an adverse summary judgment on noninfringement and negotiating a settlement.
Mullins v. Motorcycle Tour Conversion Inc., et al.*
Represented defendant in breach of contract and patent infringement case. Heavily litigated, then settled.
PCTEL v. U.S. Robotics*
Represented defendant in patent infringement case involving modems. Settled shortly after an extensive Markman hearing.
Riddell Inc. v. Schutt Sports Inc.
Obtained a $30 million verdict for Riddell in a patent infringement case directed to protective technology in football helmets.
Rotec Industries Inc. v. Mitsubishi Corporation, et al.*
Represented Mitsubishi in patent infringement, trade secret misappropriation, commercial bribery and tortious interference actions involving the equipment supplied at Three Gorges Dam in Yichang, China. Won four motions for summary judgment (two in Illinois and two in Oregon). The favorable ruling on the patent claim was affirmed by the Federal Circuit and the commercial bribery and tortious interference judgments were affirmed by the Ninth Circuit. The Ninth Circuit decision in essence revised Ninth Circuit law based on a recent U.S. Supreme Court case cited. 348 F. 3d 1116 (9th Cir. 2003); 215 F. 3d 1246 (Fed. Cir. 2000).
Source Inc. v. Rewards Network Inc.*
Defended Rewards Network in patent infringement case involving business method patents dealing with rewards technology.
TriStrata Technology Inc. v. ICN & Medicis*
Patent infringement case; continued enforcement of alpha hydroxy acid patents, settlements ongoing resulting in significant royalties paid to TriStrata.
TriStrata Technology Inc. v. ICN Pharmaceuticals Inc. & Medicis*
Represented TriStrata in patent infringement case involving antiwrinkle cream. The case resulted in a jury decision after an eight-day trial. A multimillion-dollar verdict was obtained and the case settled before appeal, after pursuing an injunction. Continued enforcement of alpha hydroxy acid patents; settlements ongoing, resulting in significant royalties paid to TriStrata.
TriStrata Technology Inc. v. Pierre Fabre S.A., et al.*
Patent infringement for retinal patent. Significant discovery and settled.
Turn-Key-Tech., LLC v. Krauss-Maffei Corporation, et al.*
Represented Krauss-Maffei in patent infringement case involving patent directed to mold equipment for making CDs and DVDs. Successfully obtained summary judgment of noninfringement. The decision was affirmed by the U.S. Court of Appeals for the Federal Circuit.
Wilson Sporting Goods v. Easton Sports Inc.*
Represented Easton Sports in litigation involving claims and counterclaims regarding infringement of baseball bat patents. The case settled favorably with no money being paid by Easton.
* Prior Experience
Intellectual Property Litigation
Chris Sorenson v. Getty Images, et al.*
Successfully negotiated settlement on breach of contract on copyright issues.
Christopher P. Flora, et al. v. Art.com, et al.*
Successfully negotiated settlement on breach of contract on copyright issues.
Gentieu, et. al. v. Tony Stone Images/Chicago Inc.*
Successfully represented defendant Getty Images/Tony Stone Images in high-profile copyright infringement litigation and breach of contract case between an individual photographer and one of the largest stock photography houses, Getty Images Inc. (parent of Tony Stone Images). Won summary judgment and were awarded fees. (The case settled while on appeal). 255 F. Supp. 2d 838 (N.D. Ill. 2003) (summary judgment granted), 2003 WL 22048059 (N.D. Ill. 2003) (fee award).
Gentieu alleged a breach of contract, breach of fiduciary duty and copyright infringement. In a very lengthy opinion, the Court engaged in an extensive analysis of the Plaintiffs’ photographs and the allegedly infringing photographs and in a decision of significant import in the copyright area, clarified the scope of copyright protection in photographic images.
Breach of fiduciary duty presently on appeal to the 7th Circuit.
Hard Rock Cafe Licensing Corporation v. Peter Morton*
Case alleging trademark infringement and breach of license agreement in which Hard Rock Cafe Licensing Corporation filed demand for arbitration in connection with development of Hard Rock Hotel & Casino; Morton filed lawsuit to stay arbitration; court concluded arbitration appropriate, resulting in 1995 arbitration which was resolved favorably to the client.
Peter Morton, et al. v. The Rank Organisation PLC, et al.*
Represented The Rank Organisation in case alleging trade dress infringement, breach of fiduciary duty, breach of contract and misappropriation of trade secrets in connection with the Rank Organisation's development and interest in Planet Hollywood; adjudication in Rank Organisation's favor on trade dress infringement and misappropriation of trade dress secrets; settled remaining allegations.
* Prior Experience
Trademark Litigation
MetLife Inc. v. AT&T Wireless Services Inc.*
Trademark infringement on METLIFE mark. Filed for emergency TRO just before the Super Bowl to stop AT&T's launch of its "M Life" ad campaign. Successful in negotiating a settlement protecting the client's rights.
SmithKline Beecham v. ToCAD*
Trademark cancelation proceeding. Successfully argued on behalf of Tocad. Affirmed on appeal.
Rockwell Graphic Systems Inc. v. DEV Industries Inc., et al.
Two week jury trial involving misappropriation of trade secrets on printing press technology trial where jury found liability and awarded multi-million dollar verdict; injunction ordered and judgment affirmed on appeal before 7th Circuit Court of Appeals (1990)
* Prior Experience