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Patent Attorney - Litigation and Prosecution

Location:
Plainfield, IL
Posted:
November 02, 2024

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Resume:

Jason Michael Wejnert

***** ***** ***., **********, ** 60585

630-***-**** *****.*******.*******@*****.***

LEGAL EXPERIENCE

Devlin Law Firm, LLC (remote)

Senior Attorney, 2022-Present

Practice concentrated on patent prosecution, patent litigation, PTAB and ITC matters for semiconductor device, Internet, medical device, wireless standards, machine learning and database technologies. Conducted hearings, including Markman and pre-trial hearings, depositions, discovery, source code review and management of associate trial teams. Patent prosecution of medical device and deep learning applications.

Axiom Law, Chicago, IL

Outsourced Freelance Attorney, 2020-2022. Engagements Listed Below:

IBM, Armonk NY (remote)

Data Governance Counsel

Assist their Research and software development teams in working with data clearance and fair use work ahead of AI product releases. Review the licensing terms of the data and ensure that IBM is in compliance with the licensing terms. Advise researchers and developers on risks and compliance of Generative AI models with corporate governance policies and standards.

Kimberly Clark Corp., Neenah WI (remote)

IP Counsel

Patent prosecution, freedom to operate opinions, patent and trademark litigation consulting for consumer products.

Navistar, Inc. Lisle, IL (remote)

IP Counsel

Patent prosecution, freedom to operate opinions, patent litigation and licensing consulting for automotive and autonomous vehicle technologies.

Here Technologies, Chicago, IL

Patent Attorney

Patent prosecution and freedom to operate opinions for mapping, drone, autonomous vehicle and electric vehicle technologies.

Los Alamos National Laboratories, Feynman Center for Innovation, Los Alamos, NM (remote)

Los Alamos National Laboratories, IP Counsel

Danaher Corporation, Danaher Innovation Center, Cambridge, MA (remote)

Danaher Innovation Center IP Counsel

Caterpillar, Inc., Peoria, IL (remote)

Counsel, Patent Development Team

SpencePC, Chicago, IL

Partner, Intellectual Property Group, 2017– February 2021

Practice primarily centered on patent litigation, patent prosecution and licensing for complex technologies, including Internet and wireless technologies, telecommunications, medical device, software, hardware and database systems. Prepared several inter partes review and covered business method responses in 3D camera, accounting system and materials science fields. Technology transfer counseling for monetization of IP portfolios.

Dinsmore & Shohl LLP, Chicago, IL

Partner, Intellectual Property Group, 2014 – 2017

Practice focused on patent litigation and prosecution for industry-leading clients, as well as ex parte and inter partes reexamination and review proceedings. Technology fields included personal watercraft, IoT systems, food chemistry and e-commerce.

Kirkland & Ellis LLP, Chicago, IL

Partner, 2010 –2014

Associate, 2007 – 2010

Negotiated complex software and services outsourcing, cloud hosting, SaaS, data privacy and security agreements related to M&A, technology transfer and private equity counseling.

Litigated and counseled on patent matters for companies of various sizes across a variety of complex technologies, managing all aspects of case from inception, discovery, Markman hearings, motion practice through trial, including Internet protocols, telecommunications, wireless protocols (e.g. Wi-Fi, WiMAX, CDMA, Bluetooth), e-commerce software, microelectronics and hardware and database systems.

Brinks, Hofer, Gilson & Lione, Chicago, IL

Associate, 2004 –2007

Responsible for trademark and patent preparation and prosecution for clients in semiconductor, medical, communications, and automotive industries. Counseled clients in litigation and freedom-to-operate opinions.

ENGINEERING EXPERIENCE

Motorola, Inc., Mesa, AZ

Sr. Semiconductor Engineer, 2001 – 2004

Medtronic Inc., Tempe, AZ

Sr. Failure Analysis Engineer, 1998 – 2001

Intel Corp., Chandler, AZ

Sr. Process Engineer, 1995 – 1998

EDUCATION

Sandra Day O’Connor College of Law (ASU), Tempe, AZ

J.D., May 2004

Jurimetrics Journal, Senior Editor

Arizona State University College of Business, Tempe, AZ

M.B.A. Financial and Technology Management, February 1999

Columbia University, New York City, NY

M.S. Electrical Engineering with Certificate in Wireless Technology Engineering, February 1999

Cornell University, Ithaca, NY

B.S. Applied & Engineering Physics, with distinction, January 1995

ADMISSIONS

Supreme Court Illinois; U.S.P.T.O. Registered Patent Agent; PTAB; N.D. Illinois; E.D. Texas; W.D. Texas; E.D. Mich.



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