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Benjamin E. Weed

Partner
+1.312.781.7166
Fax +1.312.345.1843

Mr. Weed is a registered patent attorney with a background in computer science. He concentrates his practice in patent litigation, post grant practice at the Patent Trial and Appeal Board, prosecution, counseling, due diligence, and opinion work. Prior to his career as a lawyer, Mr. Weed worked as a software developer at Motorola, Inc.’s Chicago-area corporate headquarters.

As a PTO-registered lawyer, Mr. Weed has experience handling standard patent prosecution matters as well as matters before the Board of Patent Appeals and Interferences. Mr. Weed also has experience with post-grant proceedings at the Patent Trial and Appeal Board, and has been involved in the preparation and prosecution of more than 30 inter partes review and covered business method review petitions.  In all instances, Mr. Weed’s involvement has been on behalf of Petitioners and has been coupled with overall trial strategy for co-pending district court litigation. He has experience handling ex parte reexamination, broadening reissue, and inter partes reexamination on behalf of clients at the United States Patent and Trademark Office.

Mr. Weed is experienced in all facets of intellectual property litigation, including fact and expert discovery, motion practice, claim construction practice, and trial practice. He has argued before the Patent Trial and Appeal Board, has presented Markman arguments in the Eastern District of Texas, has presented technical tutorials in the Western District of Texas, has argued motions in the Northern District of Illinois, and has presented expert witness testimony at the International Trade Commission.  He has been an integral part of trial teams developing strategies in patent infringement cases before various federal district courts as well as the International Trade Commission. He also has experience in appellate practice before the Court of Appeals for the Federal Circuit. 

Mr. Weed’s experience includes work in various federal district courts and before the International Trade Commission handling Section 337 Investigations, both supporting and in defense of charges of patent infringement. Mr. Weed’s patent litigation experience spans a diverse set of technologies, including work in the fields of computer systems and software, medical devices, robotics, passive RFID technology, battery technology, location-based services technology, smartphone operating systems, computer interface technology, digital imaging and image processing technology, DRAM and NAND flash technology, automotive parts, cellular telephone technology, and security systems.

Mr. Weed has litigated in numerous patent venues, including the Northern District of Illinois, the Eastern District of Texas, the Western District of Texas, the District of Delaware, the Northern District of California, and the International Trade Commission. He has experience in appellate practice before the Court of Appeals for the Federal Circuit.

Professional Background

Mr. Weed worked as a software developer for Motorola’s cellular infrastructure business over the course of three years. During this time, he was responsible for developing software that operated on cellular infrastructure components, as well developing software to test the functional and load capabilities of infrastructure components. He has experience in web site administration and web software development.

During law school, Mr. Weed was a legal extern for the Chicago office of a large international law firm, assisting in patent prosecution and patent litigation matters. Also during law school, Mr. Weed was actively involved in the Moot Court program at the Chicago-Kent College of Law.

  • Prepared, filed, litigated, and argued before the Patent Trial and Appeal Board on behalf of Petitioner in consolidated hearing for five inter partes review proceedings related to generator brush technology.  Drafted substantive papers during the proceeding and conducted discovery depositions of Patent Owner witnesses.
  • Prepared and filed inter partes review petition at the Patent Trial and Appeal Board on behalf of Petitioner HTC America, Inc. for patent related to stereo camera technology.  Filing of petition resulted in favorable settlement of underlying litigation for client and several co-defendants.
  • Prepared and filed several inter partes review petitions at the Patent Trial and Appeal Board on behalf of various Petitioners for patents relating to location-based services.
  • Counsel before the Patent Trial and Appeal Board in inter partes review on behalf of LKQ Corporation.  Assisted in drafting Petition for Review, Reply to Patent Owner Response and Opposition to Motion to Amend.  Conducted fact and expert discovery in the inter partes review and in the related district court case.
  • Trial counsel for Plaintiff Zebra Technologies Corp. in Northern District of Illinois litigation against competitor Intermec, Inc.  Case is ongoing, and has involved upwards of 18 patents-in-suit at various times.
  • Trial counsel for Google, Inc. and Motorola Mobility, Inc. in Eastern District of Texas case involving mobile website technology.  Case resolved favorably after claim construction and before expert reports.
  • Trial counsel for SolarWinds, Inc. in Eastern District of Texas case involving software activation technology.  Argued at Markman hearing on behalf of multiple remaining defendants.
  • Trial counsel for SolarWinds, Inc. in Eastern District of Texas case involving software activation technology.  Case was dismissed after claim construction and before expert reports.
  • Trial counsel for Acer, Inc. in International Trade Commission Investigation related to memory card technology.  Responsible for preparing and presenting respondents’ non-infringement expert at the evidentiary hearing.  Initial Determination found no infringement of patents on which the expert opined.
  • Counsel for Westinghouse Air Brake Technologies Corporation (“Wabtec”), Standard Car Truck Company, and Tianrui Group Foundry Company, Ltd. in patent infringement action (S.D. Ill) brought by Amsted Industries Inc. related to railway car sideframes and bolsters. Case settled after service of invalidity contentions.
  • Appellate counsel for Eastman Kodak Company during Apple, Inc.’s appeal of the International Trade Commission’s findings with regard to the ‘964 Patent.  The Federal Circuit issued a per curiam affirmance on July 23, 2012.
  • Trial counsel for Eastman Kodak Company in an International Trade Commission investigation initiated by Apple, Inc. involving digital cameras and image processing technology. Administrative Law Judge Robert K. Rogers issued an Initial Determination finding: (i) Kodak did not infringe either of Apple's '911 or '964 Patents; (ii) Apple's '911 Patent was invalid; and (ii) Apple lacked the required domestic industry for the '964 Patent. The International Trade Commission declined to review the Initial Determination. At the close of the evidentiary hearing ALJ Rogers commented: “If I were going to hold out a hearing for an example of how to go about this, it would be the one you just put on because you have saved a lot of time by avoiding unnecessary bickering and by focusing on what the real issues in the case were as opposed to going far afield. So thank you for that.”
  • Trial counsel for Eastman Kodak Company in a District Court case against Apple, Inc. involving technology related to operating system design, digital camera user interfaces and power management, ink-jet printers, and serial communication technology.
  • Trial counsel for Eastman Kodak Company in an International Trade Commission investigation against Apple, Inc. and Research in Motion Ltd. relating to digital camera technology.
  • Trial counsel for large international manufacturer of DRAM and NAND flash products in International Trade Commission Investigation involving patents directed to semiconductor memory technologies. Case settled favorably for the client.
  • Trial counsel for large video game manufacturer defending against charges of patent infringement related to networked gaming and video game encryption technologies in the District of Delaware.
  • Trial counsel for providers of content delivery systems and solutions in district court cases relating to customized content delivery technology.
  • Trial counsel for Robert Bosch LLC and related entities in two large patent infringement litigations involving medical device technology in the Northern District of Illinois.
  • Trial counsel for Mentice SA and Mentice AB in patent infringement litigation involving computerized medical procedure simulations in the Eastern District of Texas. The case was favorably transferred to the Northern District of Ohio following Volkswagen II and TS Tech cases.
  • Key member of litigation team for patent infringement litigation involving automotive windshield technology in the Eastern District of Michigan. The case settled favorably.
  • Mr. Weed maintains a robust prosecution practice, having secured U.S. and foreign patent rights for clients ranging from startups to large multi-national corporations, with an emphasis in computer hardware, software, and business method technologies.  He has experience advising clients on overall patent prosecution and monetization strategies.
  • Mr. Weed has been involved in due diligence and opinion work in computer software-related technology areas, either in anticipation of bringing a lawsuit or in anticipation of the potential that a client will be accused of patent infringement. Mr. Weed has also been involved in the assessment of foreign patent rights, done in anticipation of the purchase of a large patent portfolio related to medical device technology.