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Daniel J. Burnham



Dan Burnham has a comprehensive intellectual property practice that encompasses a diverse range of sophisticated technologies and legal issues. He is a registered patent attorney who represents clients in federal courts and at the United States Patent and Trademark Office.

What do you focus on?

I utilize my engineering experience to work closely with clients in the product development process, helping to avoid competitive patents and ensure commercial exploitation of new products through effective intellectual property protection.

I have significant experience in developing and managing patent and trademark portfolios for small, emerging-growth companies as well as for large, established corporations. I have been involved in numerous litigation matters and ADR proceedings in the United States, Europe and China. Negotiating and drafting license agreements and other technology-related contracts is another practice area that I am frequently called upon to handle.

By combining my practical, hands-on industry experience with knowledge of key aspects of intellectual property law, I provide my domestic and international clients with strategic intellectual property counseling that helps them achieve their business objectives.

Representative areas of technical knowledge:

  • Biosensing technology
  • Medical devices
  • Gaming software and processes
  • MEMS devices
  • Digital-dentistry software and processes
  • Coin and currency machines
  • Laser systems and semiconductor laser diodes
  • Casino gaming machines
  • Nutraceuticals
  • Acoustic transducers
  • Surface treatment technology
  • Consumer products and packaging
  • Pipe repair technology
  • Hearing aids
  • Dental implant systems
  • Biorefinery technology

What do you see on the horizon?

In 2017, the Supreme Court’s TC Heartland case greatly limited a patentee’s ability to select a venue for an infringement suit against a defendant. In that case, the Supreme Court decided that venue is proper in a patent infringement suit where the defendant is incorporated or has a regular and established place of business. In November 2020, the Federal Circuit granted Apple’s petition for a writ of mandamus in a patent infringement lawsuit pending against Apple in the Western District of Texas. Despite the standard being a clear abuse of discretion, the Federal Circuit reversed the District Court and found that the Northern District of California was a more convenient forum for Apple under 28 U.S.C. § 1404(a). In future infringement suits, we will likely see more motion practice under doctrine of forum non conveniens regarding the factors that may affect the “convenience of parties and witnesses” in the interest of justice.

Contact

Daniel J. Burnham

Partner

Chicago

Phone: 312-425-8513


Fax: 866-658-4079

University of Illinois, B.S.M.E, with honors

Saint Louis University, J.D., cum laude

U.S. District Court, Northern District of Illinois

U.S. District Court, Eastern District of Missouri

U.S. Court of Appeals, Federal Circuit

U.S. Patent and Trademark Office

Illinois

Missouri

  • The Best Lawyers in America© 2021, Litigation—Intellectual Property and Patent Law; listed since 2019
  • Managing Intellectual Property—Recognized as an “IP Star” (2018–2020)
  • IAM Patent 1000—Ranked as a leading lawyer for patent prosecution (2018–2020)

American Bar Association (Intellectual Property Section)
American Intellectual Property Law Association
Intellectual Property Law Association of Chicago
Bar Association of Metropolitan St. Louis
Intellectual Property Law Association of Chicago

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