Services
Education
- Northwestern University School of Law, J.D.
- University of Cincinnati, B.A., summa cum laude
Admissions
- Ohio
- Illinois
- U.S. Supreme Court
- U.S. Court of Appeals, Federal Circuit
- U.S. Court of Appeals, District of Columbia Circuit
- U.S. Court of Appeals, Sixth Circuit
- U.S. Court of Appeals, Seventh Circuit
- U.S. District Court, Northern District of Ohio
- U.S. District Court, Southern District of Ohio
- U.S. District Court, Northern District of California
- U.S. District Court, Eastern District of Wisconsin
- U.S. District Court, Northern District of Illinois
RecognitionMark has an AV Preeminent Rating from Martindale Hubbell and peer reviews rank Mark as a top lawyer in Intellectual Property. A leader in his field, Mark has been named in Legal 500 United States as a leading lawyer in trade secrets litigation. For the fifth consecutive year, Chambers USA: America's Leading Lawyers for Business ranks Mark for exceptional standing in intellectual property law. Additionally, Intellectual Asset Management (IAM) Magazine listed Mark as one of the top-flight IP strategists in its IAM 250--A Guide to the World's Leading IP Strategists for 2011 and IAM 300 – A Guide to the Word’s Leading IP Strategists for 2012. The Illinois Super Lawyers magazine has ranked Mark as a "Super Lawyer" every year since 2005. Mark has been recognized in Best Lawyers 2013 for Intellectual Property Litigation. In 2013, Mark was recognized as an “IP Star” by Managing Intellectual Property.
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R. MARK HALLIGAN
R. Mark Halligan is an accomplished trial lawyer who focuses his practice on intellectual property litigation and complex commercial litigation. Mark has successfully represented both individuals and corporations as plaintiffs and defendants in federal and state courts in the United States.
As an intellectual property litigator, Mark has tried cases involving patent, trademark, and copyright issues, and has established himself as a sought after practitioner and thought leader in the ever-growing area of trade secrets law. He has successfully tried numerous cases regarding the misappropriation, protection and enforcement of trade secrets. Mark is also frequently retained by corporate entities to counsel and conduct audits on trade secret valuation, asset management, and best practices to minimize the misappropriation of trade secrets.
Mark is a prolific lecturer on trade secrets and other intellectual property issues, and serves on the Adjunct Faculty of John Marshall Law School in Chicago, where he teaches trade secrets law.
Mark was the Counsel of Record for Amici Curiae Association Internationale Pour La Protection De La Propriete Intellectuelle (AIPPI) and International Association for the Protection of Intellectual Property (AIPPI-US), Bilski v. Doll, Supreme Court of the United States, Case No. 08-964 (August, 2009). He is the co-author of the book Trade Secret Asset Management: An Executive’s Guide to Information Asset Management, Including Sarbanes-Oxley Accounting Requirements for Trade Secrets (with Richard F. Weyand), Aspatore Books (2006). Mark is the General Editor of the Intellectual Property Law, 2013 edition, published by the Illinois Institute for Continuing Legal Education (IICLE).
Publications and presentations
- “Hot Topics & Current Developments in Patent, Trademark, Copyright and Trade Secrets Law,” 57th Annual Seminar, The John Marshall Law School, February 22, 2013. (Speaker)
- The 2012 IPLAC 23rd Annual Trade Secrets Seminar, The John Marshall Law School, "Recent Developments in Trade Secrets Law", December 5, 2012. (Speaker)
- “Managing and Valuing Trade Secrets” Webinar, Certified Patent Valuation Analyst (CPVA), The Business Development Academy (BDA), November 13, 2012. (Speaker)
- “Significant Developments in Trade Secrets,” Trade Secret Law Summit, American Intellectual Property Law Association (AIPLA) Annual Meeting, Washington, DC, October 23, 2012. (Speaker)
- “Industry Perspective on Threats and Challenges to Protecting Trade Secrets,” National Intellectual Property Rights (IPR) Coordination Center, Arlington, VA, September 20, 2012. (Speaker)
- “Recent Federal Developments in Trade Secrets Law 2012-2013,” Intellectual Property Owners Association (IPO) Annual Meeting, September 11, 2012. (Speaker)
- “Intellectual Property Licensing Agreements,” Illinois Institute of Continuing Legal Education (IICLE), Chicago, June 22, 2012. (Moderator and Speaker)
- “Trade Secrets: Your Secret Weapon Under Patent Reform,” SRR Journal, Spring 2012. (Co-author with David Haas)
- “The Internationalization of Trade Secret Disputes, Big Cases, Big Verdicts and Big Challenges,” AIPLA Spring Meeting, Dallas, Texas, May 10, 2012. (Moderator)
- “Sabermetrics See Recent Scrutiny,” Chicago Daily Law Bulletin, May 29, 2012. (Coauthor with Matthew Frankel)
- “How to Keep Trade Secrets from Walking Out the Door,” Bloomberg BNA Webinar, May 1, 2012. (Speaker)
- “Computers and Trade Secrets: Making Certain That In-House and Outside Counsel Protect Their Client’s Trade Secrets,” AIPLA, April 18, 2012. (Speaker)
- “Computers and Trade Secrets: Ethical Considerations for Inside and Outside Counsel Protecting Trade Secrets.” North Suburban Bar Association, 2nd District Courthouse, Skokie, Illinois, April 17, 2012. (Speaker)
- “Baseball’s Trade Secrets—Secret Sabermetrics: Trade Secret Protection in the Baseball Analytics Field,” Nixon Peabody Webinar, April 4, 2012. (Co-presenter)
- “Recent Developments in Intellectual Property Law: Trade Secret Law,” The John Marshall School of Law Intellectual Property Conference, February 24, 2012. (Speaker)
- “Trade Secret Assets: Management and Valuation,” BVR (Business Valuation Resources LLC) Webinar, January 18, 2012
- “Trademark Surveys: A Litigator’s Guide,” Oxford University Press. (2011). (Coauthor with James T. Berger)
- “Roundtable Discussion of Supreme Court case Microsoft Corp. v. i4i Limited Partnership,” DePaul University School of Law, April 7, 2011. (Speaker)
- “Recent Developments in Trade Secrets Law,” Annual Meeting, American Intellectual Property Law Association (AIPLA), Washington, DC, October 21–23, 2010. (Speaker)
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“Trade Secrets v. Patents: The New Calculus,” ABA Intellectual Property Law (ABA-IPL) Landslide magazine, July/August 2010. (Author)
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“Patentable Subject Matter After the Supreme Court Bilski Opinion,” DePaul University School of Law. (Speaker)
- ABA IPL Annual Review of Intellectual Property Law Developments 2006-2008, ARVC Division IV and Contributor on Trade Secrets.
- Trade Secret Asset Management: An Executive’s Guide to Information Asset Management, Including Sarbanes-Oxley Accounting Requirements for Trade Secrets (with Richard F. Weyand), Aspatore Books (2006).
- “Protection of U.S. Trade Secret Assets: Critical Amendments to the Economic Espionage Act of 1996,” 7 J. Marshall Rev. Intell. Prop. L. 656 (2008).
- “Protecting Trade Secrets,” CLE Presentation, Mentor CLE, January 2008.
- “Capturing the Value of Trade Secrets,” Business Power: Creating New Wealth from IP Assets, Chapter 7, The National Knowledge & Intellectual Property Management Taskforce, John Wiley & Sons, Inc. (2007).
Representative Experience- Trial counsel for major wireless technologies company in Section 337 proceedings before the Intnl Trade Commission for alleged patent infringement requesting exclusion and cease and desist orders relating to alleged infringement of U.S. Patent
Trial counsel for major wireless technologies company in Section 337 proceedings before the International Trade Commission for alleged patent infringement requesting exclusion and cease and desist orders relating to alleged infringement of U.S. Patent No. 5,809,336 (the ‘336 patent) involving electronic notebooks, tablets, smartphones, e-readers, data cards, handheld game consoles and other consumer electronic devices with wireless capabilities. - Trial counsel in trade secret misappropriation dispute relating to the design and development and misappropriation of a complex proprietary consumer bankruptcy software system development and theft of a complex proprietary law firm consumer bankruptc
Trial counsel in trade secret misappropriation dispute relating to the design and development and misappropriation of a complex proprietary consumer bankruptcy software system development and theft of a complex proprietary law firm consumer bankruptcy software system. - Trial counsel in trade secret misappropriation and unjust enrichment lawsuit involving proprietary technologies relating to the up tower repair of defective wind turbines.
Trial counsel in trade secret misappropriation and unjust enrichment lawsuit involving proprietary technologies relating to the up tower repair of defective wind turbines. . . . View all . . .
- Trial counsel for defendants in lawsuit involving alleged violations of non-compete and non-disclosure obligations, breach of fiduciary duties, unfair competition, unjust enrichment and civil conspiracy in the niche group travel market.
Trial counsel for defendants in lawsuit involving alleged violations of non-compete and non-disclosure obligations, breach of fiduciary duties, unfair competition, unjust enrichment and civil conspiracy in the niche group travel market.
- Retained by defendants as testifying expert in trade secrets misappropriation lawsuit in California.
Retained by defendants as testifying expert in trade secrets misappropriation lawsuit in California.
- Retained as special counsel in defense of claims for recovery of attorneys fees based on allegations of "bad faith" litigation under the Uniform Trade Secrets Act.
Retained as special counsel in defense of claims for recovery of attorneys fees based on allegations of “bad faith” litigation under the Uniform Trade Secrets Act.
- Retained as appellate counsel in appeal by Plaintiff of the dismissal of a trade secret misappropriation claim relating to proprietary software systems.
Retained as appellate counsel in appeal by Plaintiff of the dismissal of a trade secret misappropriation claim relating to proprietary software systems.
- Lead trial counsel in Michigan lawsuit involving alleged violations of non-compete and non-disclosure obligations, breach of fiduciary duties, unfair competition, unjust enrichment and civil conspiracy.
Lead trial counsel in Michigan lawsuit involving alleged violations of non-compete and non-disclosure obligations, breach of fiduciary duties, unfair competition, unjust enrichment and civil conspiracy.
- Trial counsel for major telecommunications company in federal court action for violations of the Computer Fraud and Abuse Act and trade secret misappropriation in the United States District Court for Northern District of Illinois.
Trial counsel for major telecommunications company in federal court action for violations of the Computer Fraud and Abuse Act and trade secret misappropriation in the United States District Court for Northern District of Illinois.
- Trial counsel for major national health and fitness client in action against former chief operating officer in federal court action for violations of the Computer Fraud and Abuse Act and trade secret misappropriation in the Northern District of Illin
Trial counsel for major national health and fitness client in action against former chief operating officer in federal court action for violations of the Computer Fraud and Abuse Act and trade secret misappropriation in the Northern District of Illinois.
- Trial counsel for international general contractor engaged in the engineering and construction of industrial facilities in federal court action for the threatened or actual misappropriation of trade secrets
Trial counsel for international general contractor engaged in the engineering and construction of industrial facilities in federal court action for the threatened or actual misappropriation of trade secrets relating to proprietary zinc solvent extraction technologies and other federal and state claims in the United States District Court for the Southern District of Illinois.
- Trial counsel for the largest audio manufacturer in the US in the defense of a lawsuit for the alleged misappropriation of trade secrets relating to acoustic echo cancellation technologies in Utah state court.
Trial counsel for the largest audio manufacturer in the US in the defense of a lawsuit for the alleged misappropriation of trade secrets relating to acoustic echo cancellation technologies in Utah state court.
- Trial counsel for manufacturer of mobile airfield lighting systems for military applications in defense of a lawsuit for trade secret misappropriation in state court in Cook County, Illinois.
Trial counsel for manufacturer of mobile airfield lighting systems for military applications in defense of a lawsuit for trade secret misappropriation in state court in Cook County, Illinois.
- Trial counsel for manufacturer of borosilicate and quartz glassware for the biomedical, environmental, pharmaceutical, educational, chemical, chromatography and laser industries
Trial counsel for manufacturer of borosilicate and quartz glassware for the biomedical, environmental, pharmaceutical, educational, chemical, chromatography and laser industries and governmental agencies in state court action for trade secret misappropriation and other claims in Cook County, Illinois.
- Trial counsel for investigative firm engaged in the investigation of financial fraud and counterfeiting activities in trade secret misappropriation and breach of contract action in the United States District Court for the Northern District of Califor
Trial counsel for investigative firm engaged in the investigation of financial fraud and counterfeiting activities in trade secret misappropriation and breach of contract action in the United States District Court for the Northern District of California.
- Trial counsel for manufacturer of on-line process analyzers and instruments in defense of trade secret misappropriation claims relating to the alleged misappropriation of source code
Trial counsel for manufacturer of on-line process analyzers and instruments in defense of trade secret misappropriation claims relating to the alleged misappropriation of source code and testing harnesses in the United States District Court for the Northern District of Illinois.
- Trial counsel for manufacturer of greeting cards in defense of action for copyright infringement of six greeting cards in the United States District Court in Minneapolis, Minnesota.
Trial counsel for manufacturer of greeting cards in defense of action for copyright infringement of six greeting cards in the United States District Court in Minneapolis, Minnesota.
- Trial counsel for agricultural and construction equipment manufacturer in patent infringement suit involving round hay balers in the United States District Court for the Eastern District of Wisconsin.
Trial counsel for agricultural and construction equipment manufacturer in patent infringement suit involving round hay balers in the United States District Court for the Eastern District of Wisconsin.
- Trial counsel for manufacturer of custom-designed optical filters and coatings in trade secret misappropriation lawsuit relating to optical interference filters in state court in Brattleboro, Vermont.
Trial counsel for manufacturer of custom-designed optical filters and coatings in trade secret misappropriation lawsuit relating to optical interference filters in state court in Brattleboro, Vermont.
- Trial counsel for major telecommunications manufacturer in action for trade secret misappropriation relating to technologies involved in call center solutions in state court in DuPage County, Illinois.
Trial counsel for major telecommunications manufacturer in action for trade secret misappropriation relating to technologies involved in call center solutions in state court in DuPage County, Illinois.
- Trial counsel for an international warehouse distributor of tools and equipment in trade secret misappropriation lawsuit for the memorization and theft of proprietary customer information in state court in Cook County, Illinois.
Trial counsel for an international warehouse distributor of tools and equipment in trade secret misappropriation lawsuit for the memorization and theft of proprietary customer information in state court in Cook County, Illinois.
. . . Hide Representative Experience . . .
Affiliations
- Immediate Past Vice President of the International Association for the Protection of Intellectual Property (AIPPI);
- US Representative, Worldwide AIPPA Nominations Committee (2012 – 2015)
- Member, AIPPI United States Executive Committee, co-chair of the Q215 Committee on Trade Secrets at the AIPPI World Congress in Paris;
- Founder, Intellectual Property Law Association of Chicago (IPLAC), Trade Secrets and Unfair Competition Committee;
- Member of the American Bar Association, Section of Litigation; Intellectual Property Litigation;
- Member of the American Intellectual Property Law Association (AIPLA) amicus committee;
- Past President of the Intellectual Property Law Association of Chicago;
- Past Chair of the Trade Secrets Committee of the American Intellectual Property Law Association (AIPLA);
- Past Chair of the American Bar Association Trade Secrets Committee;
- Master of the Richard Linn Inn of Court;
- Fellow of The American Bar Foundation; and
- The Best Attorneys Network, Intellectual Property Law.
Thought Leadership/Alerts
Press
Media Clips- Lawyers See IP Protection Help in U.S. Trade-Secrets Focus
Reuters | February 22, 2013
Chicago Intellectual Property Litigation partner Mark Halligan discusses efforts to combat trade-secret theft. - Seventh Circuit Ruling Clears Website of Infringement
Chicago Daily Law Bulletin | August 3, 2012
This article focuses on a ruling from the 7th U.S. Circuit Court of Appeals indicating that a website that provides copyrighted videos without consent does not contribute to copyright infringement. Chicago intellectual property partner Mark Halligan provides third party commentary. - Expert Witness: Lawyers Put Their Legal Skills to Use in Creative Way
Chicago Lawyer | August 1, 2012
Chicago intellectual property litigation partner Mark Halligan discusses how attorneys and law professors serve as consultants to strengthen cases before trial and as experts to do reports, give depositions, and provide testimony if a case goes to trial. . . . View all . . .
Events
Conferences/Speaking Engagements
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