Mimi Addy is a deeply experienced intellectual property litigator who specializes in cases before the U.S. Court of Appeals for the Federal Circuit and at the USPTO’s Patent Trial and Appeal Board. She has served as first- or second-chair trial counsel in nearly 30 federal district court cases, and has handled more than 40 appeals to the Federal Circuit. Addy is a member of the Federal Circuit Bar Association's board of directors, and she been a member of the Federal Circuit's Advisory Council for more than a decade. Because of her knowledge of patent litigation and the Federal Circuit, she has testified before Congress on the state of the Federal Circuit and patent appeals.
Ms. Addy counsels clients—including high-profile companies in the software, technology, biotechnology, and pharmaceutical industries—on innovation strategy to achieve the most efficient approach to realizing their IP goals. Her clients describe her 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, Ms. 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."
Ms. Addy also served as chair of the Amicus Committee for the American Intellectual Property Law Association (AIPLA), and was a co-founder and the first president of the Richard Linn American Inn of Court directed to intellectual property.
As an extension of her passion for protecting innovation and preserving entrepreneurial businesses, Ms. Addy created the blog Business De Novo, intended to generate conversations around the business of innovation. From 2012 to present, she has edited Claim Construction in the Federal Circuit, a publication of West LegalWorks. Addy is also a frequent speaker and panel member and has authored numerous articles and publications.
Ms. Addy earned her JD cum laude from the University of Georgia School of Law. In 2015, she received her MBA from the University of Chicago Booth School of Business. She also holds an LLM with honors from The John Marshall Law School. She earned her B.S. in electrical engineering and a B.A. in fine arts from Rice University.
Ms. Addy was named to the Illinois Super Lawyers Top 10 List in 2016 as well as years past and is regularly named in the Top 50 Women Illinois Super Lawyer and Top 100 Illinois Super Lawyers as well.
In 2014, she was featured in Law360 as a Female Powerbroker and named one of the Most Influential Women in IP Law, and was 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 during its fifteen-year history.
Below is a representative list of Ms. Addy’s cases and matters.
Supreme Court Cases and Appeals at the Federal Circuit
- Represent defense contractor-patentee as appellee on appeal from a favorable decision of the Patent Trial and Appeal Board holding that specific claims of its patents were not invalid based on prior art. Elbit Sys. Am. v. Thales Visionix, Inc. (Fed. Cir. 2017). Pending.
- Represent the 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). Pending.
- Represent patentee on Petition for Rehearing En Banc at the Federal Circuit seeking rehearing on adverse decision holding its patent not valid as covering patent-ineligible subject-matter. Evolutionary Intelligence v. Sprint Nextel, et al. (Fed. Cir. 2017). Pending.
- Represent appellant Total Door Inc. on appeal of an adverse decision of the Trademark Trial and Appeal Board that its proposed mark is functional. In re Openings dba Total Door (Fed. Cir. 2017). Pending.
- Represent appellant defense contractor on successful appeal reversing the decision from the Court of Federal Claims that its patent was not valid as covering patent-ineligible subject-matter. Thales Visionix, Inc. v. Elbit Systems, Inc. (Fed. Cir. 2017).
- Represented patentee on appeal of an adverse decision by the Patent Trial and Appeal Board that its mobile technology patent is not valid. HTC v. IPCom (Fed. Cir. 2016).
- Represented a materials company on successful appeal of an adverse decision of the Court of Claims that its patent on carbon fiber was not valid. (Fed. Cir. 2016)
- Represented an 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 an international pharmaceutical company in appealing a district court decision finding infringement and validity of patents covering Latisse® treatment for thinning eyelashes. Allergan, Inc. v. Apotex (Fed. Cir. 2013).
- Represented an 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 a manufacturing company in successful reversal of an adverse reexamination determination by the USPTO. Randall Mfg. v. Rea (Fed. Cir. 2013).
- Represented an 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).
Litigation at the Trial Courts
- Represent pharmaceutical company in breach of contract action on several products. Apex Pharmacuticals, 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. (Fed. Cir. 2016). Dismissed.
- Represent publishing company as defendant in patent litigation on web page linking technology. Cascades v. CCH, a Wolters Kluwer Company (N.D.Ill. 2015). Dismissed.
- Represented a 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 an international 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 an 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 an 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 an international pharmaceutical company in two successive 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®. The cases were 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).
- Represented a pharmaceutical company in district court litigation on a drug for treating certain types of cancer. Eli Lilly v. Sun Pharma (D. Ind. 2013).
- Successfully defended respondent in inter partes review by USPTO Patent Trial and Appeal Board (PTAB) on a patent for inertial navigation system.
- Defended respondent after grant of inter partes review by the PTAB on a patent for direct audio capture and identification of the captured audio.
- Represented requester, an S&P 500 manager of high-quality retail properties throughout the United States, in a PTAB challenge of a patent for a map navigation and display system.
- Represented requester, a multinational electronics and ceramics manufacturer, in a PTAB challenge of a patent for a mobile communicator.
- Represented requester, a provider of supply-chain execution solutions, in challenging a patent for a portable communicator.
- Represented an inventor in appealing a rejected application for a patent for an optical network.
- Represent an international automotive company in an inter partes reexamination directed to a tire-pressure monitoring patent. The examiner rejected all claims at issue. The case is on appeal before the PTAB.
Special Master and Court-Appointed Expert Appointments
- Court-appointed technical advisor in database security case. 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 US Patent and Trademark Office and explanation of the function and operation of the accused products. Protegrity v. Ingrian Networks, Inc. Dismissed before trial (D. Conn. 2013).
- Court-appointed special master in connection with preparation of reports and recommendations (R&Rs) on the order of patents, claims and terms to be adjudicated in litigation involving multiple patents related to optical character recognition (OCR) technology. Prepared R&Rs on scheduling orders and submission of late prior art. Nuance Commn's, Inc. v. ABBYY Software House, Lexmark and eCopy, Inc. (N.D. Cal. 2014).