Richard Assmus has a balanced intellectual property transactional and litigation practice. He is also closely involved in strategic IP agreements, intellectual property due diligence, technology, content and trademark licensing, brand management, copyright counseling, and advertising counseling. Richard utilizes his background in science and mathematics in connection with complex patent litigation and technology matters.
Richard's dispute resolution experience includes patent litigation, trademark litigation in federal courts and before the US Trademark Trial and Appeal Board, copyright litigation in federal courts and before the Copyright Royalty Board, state court trade secrets litigation, domain name litigation under the federal anti-cybersquatting act and the UDRP, and software and data audit disputes. He also has significant experience advising clients regarding trademark availability; procurement and protection; trademark watch services, including Internet enforcement strategies; copyright protection, registration and enforcement; and negotiating the purchase of domain names. There is a strong proactive emphasis in Richard's practice, as he helps clients anticipate contractual risks, protect trade secrets through confidentiality agreements, evaluate advertisements for potential liability for false or misleading representations, and prepare effective licensing and other technology transfer agreements.
Richard is recognized as one of the "The World's Leading Trademark Professionals" by World Trademark Review (WTR) 1000 (2016-2019). He is "a superior IP transactions expert and litigator" and "his background in science and mathematics plays well on mixed hard and soft-IP portfolio mandates."
- Represented CNH Industrial in the acquisition of AgDNA, a leader in farm information management systems.
- Represented Adapt Pharma Limited, maker of opioid overdose treatment NARCAN®, in its sale to Emergent BioSolutions, Inc. for total consideration of up to $735 million.
- Represented international gaming company in the re-negotiation and extension of a sports gambling platform services agreement in reaction to the Supreme Court’s PASPA decision.
- Represented Nestlé in the sale of its U.S. confection business to Ferrero for $2.8 billion, including the entry of trademark licenses.
- Represented CNH in a strategic alliance in connection with autonomous vehicles.
- Represented Nestlé S.A. in its $11.85 billion acquisition of the infant nutrition business of Pfizer, including evaluation of a worldwide trademark portfolio and entry into a technology and trademark licenses.
- Represented Nestlé Health Science in connection with intellectual property due diligence in its acquisition of Prometheus Laboratories Inc., a specialist in diagnostics and in-licensed specialty pharmaceuticals for gastroenterology and oncology from a private equity consortium led by American Capital.
- Represented Capital One in connection with licensing in its agreement to acquire ING Direct.
- Represented Spotify in a proceeding to determine the royalty rates for streaming of musical compositions. This proceeding determined the royalty rate to be paid by all interactive music services, including Spotify, for the mechanical license fees to be paid to music publishers. Determination of Rates and Terms for Making and Distributing Phonorecords. Docket No. 16-CRB-0003-PR (2018-2022) (CRB).
- Represented Modern Luxury Media in an action for trademark infringement, trademark dilution and unfair competition against Celebrity Cruises. Modern Luxury alleged infringement of its MODERN LUXURY trademark based on Celebrity Cruises’ use of an identical mark in advertising and marketing, as well as Celebrity Cruises’ application to register a trademark in THAT’S MODERN LUXURY. After extensive litigation, the case settled on terms favorable to Modern Luxury. (DM Luxury, LLC v. Celebrity Cruises, Inc. (USDC NDIL)).
- Successfully defended Nestlé and Kellogg's in a patent case involving a university patent for a fat composition allegedly suitable for promoting cholesterol health. Won a series of Daubert motions to exclude Plaintiffs' expert testimony on damages and liability. (Brandeis Univ. v. Keebler Co. (N.D. Ill.)) (2013).
- Successfully represented Nestlé in a patent infringement matter involving a fat composition allegedly suitable for promoting cholesterol health. Obtained a favorable claim construction ruling from Judge Richard Posner (sitting by designation), which led to a stipulation of non-infringement. (Brandeis Univ. v. Nestlé USA (N.D. Ill.) (2012).
- Represented pet food manufacturer in the dismissal of a patent infringement claim. (Reported at 767 F. Supp. 2d 806 (E.D. Mich. 2011))
- Represented tool manufacturer in the successful defense and settlement of a false marking case brought under Section 292 of the Patent Act. (E.D. Texas 2010).
- Represented health plan in the quashing of three related subpoenas for health claims information and related information regarding the use of a database of healthcare reimbursement rates. (D.N.J., N.D. Cal. 2010).
- Represented trade association in the design and implementation of a nationwide licensing program. (2008 - present).
- Represented infrastructure fund in the global settlement of a trademark opposition matter. (2010).
- Represented the United States Golf Association in a trademark infringement and unfair competition case. The court entered a default judgment and issued a permanent injunction. (Reported at 2010 WL 323203 (D.N.J. 2010)).
- Represented consumer electronic reseller is seeking indemnity from suppliers in connection with patent infringement action brought by an Acacia subsidiary. (N.D. Georgia 2009).
- Represented hotel proprietor in a trademark infringement and cyberpiracy action against a provider of hotel management services. (N.D. Cal. 2009).
- Represented a publisher of Spanish-language yellow pages directories against claims of copyright infringement, false advertising, monopolization and unfair competition. (N.D. Cal. 2009).
- Represented tool manufacturer in declaratory judgment action seeking relief from demands from software provider related to use of legacy manufacturing management software (N.D. Ill. 2009).
- Represented leading collegiate athletic conference in the defense of a lawsuit alleging fraudulent procurement of a trademark registration. (Reported at 2008 WL 5070321 (N.D. Ill. Nov. 21, 2008)).
- Represented music publisher in rate-setting proceeding for the compulsory license under Section 115 of the Copyright Act. (Copyright Royalty Board 2008).
- Represented chemical company in trade secrets action related to purloined customer sales data. (Ill. Circuit Court 2007).
- Represented leading collegiate athletic conference in the defense of a breach of contract matter, including counterclaims for trademark infringement and dilution. (S.D. Ohio 2005).
- Represented Getty Images in copyright infringement litigation and breach of contract case brought by an individual photographer. Getty won summary judgment and was awarded fees. (Reported at 255 F. Supp. 2d 838 (N.D. Ill. 2003) (summary judgment) and 2003 WL 22048059 (N.D. Ill.) (fee award)).
- Represented Internet travel company in the defense of a trade secrets action related to an allegedly poached employee. (Ill. Circuit Court 2003).
- Represented study-abroad program in the successful recovery of domain name under the UDRP. (National Arbitration Forum 2000).
The University of Michigan Law School, JD
Managing Article Editor, Journal of Law Reform, 1997-1998
The University of Chicago, BS, Mathematics
Phi Beta Kappa
- District of Columbia
- US Court of Appeals for the Ninth Circuit
- US Court of Appeals for the Federal Circuit
- US Court of Appeals for the Seventh Circuit
- US District Court for the Northern District of Illinois
- Member, Board of Directors of Lawyers for the Creative Arts (2014 to present)
- Member, Chicago Arts Partnerships in Education (CAPE) Board, 2007-present
- International Trademark Association