Mimi Addy is a deeply experienced intellectual property litigator, business strategist, and consultant, and she has held leadership positions at several AmLaw 100 firms. Addy has handled more than 30 cases in U.S. district and trial courts and more than 40 appeals before the U.S. Court of Appeals for the Federal Circuit. Among her many awards and honors, She recently was named One of the Most Influential Women in IP Law by Law360.
Addy has spent her career counseling clients on the correct strategy and most efficient approach to realize their IP goals. Those clients include high-profile S&P 500 companies, entrepreneurs, and individual inventors in the software, electrical arts, biotechnology, and pharmaceutical industries. Clients describe Addy as "an exceptionally skilled lawyer" and a "key figure, who knows the courts inside and out," adding that she is "extremely pro-business. She really understands business and how it's run." (Chambers USA)
Practicing in today’s highly complex technical environment, Addy has an innate ability to explain complex legal and technical issues to jurists and laypeople alike—an ability that in part depends on her training as an electrical engineer. Former Chief Judge Paul Michel, US Court of Appeals for the Federal Circuit, remarked, "When you ask Addy a difficult question, as we often do in oral arguments, she fires right back with a very crisp, clear answer that is totally responsive to the question. And it's factual and accurate and fair. The contrast with other attorneys is stark. Most other attorneys duck the questions. Addy answers them head-on."
Asked why clients turn to her when they are considering patent litigation and other IP-related matters? "Few litigators understand the process of innovation from inception through protection to enforcement," Addy answers. "My background in the electrical arts helps me grasp the technologies at stake, my business experience helps me weigh the key issues, and my appellate knowledge—along with two decades' experience in the courtroom—gives me insight into optimal strategies."
Addy has advised on the business of IP to the U.S. government and to the courts. She has testified before Congress on the state of the Federal Circuit and patent appeals. For many years, she was a member of the Federal Circuit’s Advisory Council and has also been a member of the Federal Circuit Bar Association's board of directors. Addy has served on Seventh Circuit committees responsible for drafting local patent rules and local patent jury instructions. She has served as chair of the Amicus Committee for the American Intellectual Property Law Association (AIPLA), and she was a co-founder and the first president of the Richard Linn American Inn of Court, directed to intellectual property.
Addy also writes the blog Business De Novo, to generate conversations around the business of innovation. She is a perennial editor of Claim Construction in the Federal Circuit, a publication of West LegalWorks. She speaks frequently on patent law and litigation and has authored numerous articles and publications.
Addy earned her JD cum laude from the University of Georgia School of Law, and an LLM with honors from The John Marshall Law School. In 2015 she earned her MBA from the University of Chicago Booth School of Business. Addy holds two undergraduate degrees from Rice University: a B.S. in electrical engineering and a B.A. in fine arts.
Addy has been featured in Law360 as a Female Powerbroker and named one of the Most Influential Women in IP Law. She has been inducted into the Law Bulletin Publishing Company’s 40 Under Forty Hall of Fame, a list of the 40 most recognized lawyers nominated for 40 Under 40 in its history.
Addy is perennially named to the Illinois Super Lawyers Top 10 List and to the Top 50 Women Illinois Super Lawyer and Top 100 Illinois Super Lawyers. In August 2018, Addy was again named in Best Lawyers (2019 ed.) in the categories of Litigation – Patent, and in Patent Law. In July 2018, Addy was named one of 250 Top Women in IP by intellectual property valuation firm IPmetrics LLC. She is featured in the IAM 1000 – The World's Leading Patent Professionals.
Below is a representative list of Addy’s recent cases and matters.
U.S. Supreme Court and U.S. Court of Appeals for the Federal Circuit
- Represented defense contractor-patentee as appellee on appeal from a favorable decision of the Patent Trial and Appeal Board (PTAB) holding that specific claims of its patents were not invalid based on prior art. Elbit Sys. Am. v. Thales Visionix, Inc. (Fed. Cir. 2018).
- Represented Professor American Intellectual Property Law Association (AIPLA) as amicus curiae on writ of certiorari about the proper interpretation of the patent venue statute, 28 U.S.C. § 1400(b). TC Heartland LLC v. Kraft Foods Group Brands LLC (S. Ct. 2017).
- Represented Raymond A. Mercado Ph.D. and Inventor Groups as amicus curiae on petition for writ of certiorari in a case about the proper application of 35 U.S.C. § 101. RecogniCorp, LLC. v. Nintendo CO., Ltd. (S. Ct. 2017).
- Represented appellant defense contractor on successful appeal reversing a decision from the Court of Federal Claims that its patent was not valid as covering patent-ineligible subject matter under 35 U.S.C. § 101. Thales Visionix, Inc. v. Elbit Systems, Inc. (Fed. Cir. 2017).
- Represented patentee on petition for writ of certiorari in case about scope of analysis when determining patent-eligible subject matter under 35 U.S.C. § 101. Evolutionary Intelligence v. Sprint Nextel, et al. (Fed. Cir. 2017).
- Represented Intellectual Property Law Association of Chicago as amicus curiae on petition for writ of certiorari in case about the scope of analysis when determining patent-eligible subject matter under 35 U.S.C. § 101. Synopsys v. Mentor Graphics (S. Ct. 2017).
- Represented appellant manufacturer of industrial doors on appeal of an adverse decision of the Trademark Trial and Appeal Board (TTAB) that its proposed mark is functional. In re Openings dba Total Door (Fed. Cir. 2017).
- Represented patentee on appeal of an adverse decision by the PTAB that its mobile technology patent is not valid. HTC v. IPCom (Fed. Cir. 2016).
- Represented materials company on successful appeal of an adverse decision of the Court of Federal Claims that its patent on carbon fiber was not valid. Zoltek Corp. v. United States (Fed. Cir. 2016)
- Represented international automotive company on appeal from adverse decision of the PTAB. Continental Automotive Systems U.S., Inc. v. Schrader-Bridgeport International, Inc. (Fed. Cir. 2014).
- Represented an international electronics company on appeal from final determination of the U.S. International Trade Commission that patents are not infringed. The case was affirmed. Industrial Technology Research v. ITC (Fed. Cir. 2013).
- Represented international pharmaceutical company on appeal of a district court decision finding infringement and validity of patents covering Latisse® treatment for thinning eyelashes. Allergan, Inc. v. Apotex (Fed. Cir. 2013).
- Represented international pharmaceutical company in appeal of a trial court determination that patents on Pulmicort Respules®, generic budesonide, are either invalid or not infringed. AstraZeneca v. Sandoz (Fed. Cir. 2013).
- Represented manufacturing company in successful reversal of an adverse reexamination determination by the USPTO. Randall Mfg. v. Rea (Fed. Cir. 2013).
- Represented international airline company as appellee from judgment of noninfringement involving a method for manufacturing e-passports. Case was decided favorably for client. Iris Corporation v. Japan Airlines Int'l Co., Ltd. (Fed. Cir. 2014).
U.S. District Courts and the Court of Federal Claims
- Represent provider of proprietary messaging platforms in assertions of its patent against competitors who filed declaratory judgments in the Northern District of California. Synopsys, Inc. v. RPost holdings Inc. (N.D. Cal. 2017), Trend Micro, Inc. v. RPost holdings Inc. (N.D. Cal. 2017).
- Represent defense contractor-plaintiff patentee before the Court of Federal Claims in litigation about technology supporting the navigation system in the F35 Joint Strike Fighter pilot's helmet. Thales Visionix, Inc. v. United States and Elbit Systems of America (C.F.C. 2017).
- Represent pharmaceutical company in breach of contract action on several products. Apex Pharmaceuticals, Inc. v. Pack Pharmaceuticals, LLC and Rising Pharmaceuticals, Inc. (Cir. Ct. Cook Cty. 2017).
- Represented automotive supplier as defendant in patent litigation related to temperature sensors. Watlow v. Continental Automotive Systems, Inc. (E.D. Mo. 2016).
- Represented publishing company as defendant in patent litigation on web page linking technology. Cascades v. CCH, a Wolters Kluwer Company (N.D. Ill. 2015).
- Represented pharmaceutical company in district court litigation on a drug for treating certain types of cancer. Eli Lilly v. Sun Pharma (D. Ind. 2013).
- Represented pharmaceutical company in patent litigation through preliminary injunction hearing related to Naropin® and generic ropivacaine hydrochloride. APP Pharma v. Navinta (D. N.J. 2012).
- Represented pharmaceutical company in patent litigation through trial under the Hatch-Waxman Act related to bimatoprost, sold by Allergan as Latisse® for hypotrichosis. Allergan v. Apotex, et al. (M.D. N.C. 2012).
- Represented international pharmaceutical company in patent litigation through trial under the Hatch-Waxman Act related to pregabalin, sold by Pfizer as Lyrica®. Case settled during trial. Pfizer v. Sandoz Inc. (D. N.J. 2011).
- Represented international pharmaceutical company in patent litigation through trial under the Hatch-Waxman Act related to bimatoprost, sold by Allergan as Lumigan® for glaucoma. Allergan v. Sandoz Inc. (D. Del. 2011).
- Represented international pharmaceutical company in two patent infringement cases over the generic drug repaglinide, used in the treatment of Type 2 diabetes and sold by Novo Nordisk under the brand name Prandin®. Novo Nordisk Inc., et al. v. Sandoz Inc. (D. N.J. 2011) and Sandoz Inc. v. Novo Nordisk, Incorporated, et al. (E.D. Mich. 2011).
Patent Trial and Appeal Board of the USPTO (PTAB)
- Defended respondent in inter partes review (IPR) on a patent for inertial navigation system.
- Defended respondent after grant of IPR on a patent for direct audio capture and identification of captured audio.
- Represented S&P 500 manager of high-quality retail properties throughout the U.S. in a PTAB challenge of a patent for a map navigation and display system.
- Represented multinational electronics and ceramics manufacturer in a PTAB challenge of a patent for a mobile communicator.
- Represented provider of supply-chain execution solutions in challenging a patent for a portable communicator.
- Represented inventor in appealing a rejected application for a patent for an optical network.
- Represented international automotive company in IPR directed to a tire-pressure monitoring patent. The USPTO's examiner rejected all claims at issue and case is on appeal.
Special Master and Court-Appointed Expert Appointments*
- Court-appointed technical advisor in database security case Protegrity v. Ingrian Networks, Inc. (D. Conn. 2013). Provided technical assistance to the court to aid in decisions relating to the litigation, including but not limited to discovery disputes, construction of the patent claims at issue, consideration of dispositive motions, explanation of the technology at issue, explanation of the scope and content of the asserted patents, prior art, procedures before the USPTO and explanation of the function and operation of the accused products. Case was dismissed before trial.
- Court-appointed special master in Nuance Commn's, Inc. v. ABBYY Software House, Lexmark and eCopy, Inc. (N.D. Cal. 2014). In litigation involving multiple patents related to optical character recognition (OCR) technology, issued reports and recommendations on the order of patents, claims and terms to be adjudicated, scheduling orders, and submission of late prior art.
*For a complete list of Addy’s Special Master and Court Appointed Expert experience, please contact her directly.