Overview

Richard Assmus has a balanced intellectual property litigation and transactional practice. He is also closely involved in intellectual property due diligence, patent and technology licensing, trademark prosecution and monitoring, 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, and domain name litigation under the federal anti-cybersquatting act and the UDRP. 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 also advises on professional responsibility matters, with a focus on legal conflict issues related to intellectual property matters in Mayer Brown’s offices worldwide. The 2016 edition of World Trademark Review (WTR) 1000 named Richard to their list of “The World's Leading Trademark Professionals.” He is recognized “for his contentious and transactional skills” and “his background in science and mathematics plays well on mixed hard and soft-IP portfolio mandates.”

Spoken Languages

  • English
Highlights
Legal Perspectives for Technology & Innovation

Experience

  • Successfully defended Kellogg’s Co. in a patent case involving a 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 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. (2011).
  • Represented Capital One in connection with licensing in its agreement to acquire ING Direct. (2011).
  • 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 health plan in the defense of claims for improper rescission of health plan contract.  (L.A. Superior Court 2007).
  • Represented office equipment service contract company in antitrust action against equipment manufacturer related to discriminatory service software practices.  (N.D. Ill. 2006).
  • 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).

Education

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

Admissions

  • District of Columbia
  • Illinois

Court

  • 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

Memberships

  • Member, Board of Directors of Lawyers for the Creative Arts (2014 to present)
  • Member, Chicago Arts Partnerships in Education (CAPE) Board, 2007-present
  • Richard Linn American Inn of Court
  • International Trademark Association