Kevin J. Byrne

Of Counsel ( Chicago )

Direct 312.471.8774 Fax 312.471.8701 LinkedIn

Bio

Kevin knows how to solve tough problems. It’s a skill he developed during his tenure as inside counsel to a large, diversified manufacturing company and over more than 25 years as outside general counsel to manufacturers and product distribution companies. Combining those experiences with his background in commercial litigation, Kevin analyzes problems from different perspectives while never losing sight of his client’s business objectives.

Kevin concentrates on commercial litigation and business law counseling, with an emphasis on intellectual property issues where he has litigated disputes involving a wide range of consumer, commercial, and industrial products. He brings practical advice and sound judgment to counseling clients about the range of intellectual property and commercial law issues that they confront as they move from R&D through branding, promotion, and sales. Kevin’s business law counseling often includes advice concerning product distribution, sales and marketing arrangements, manufacturing and supply agreements, licensing, and issues relating to antitrust, trade regulation, advertising, and unfair competition. He has represented companies seeking to register trademarks with the United States Patent and Trademark Office and appeared on behalf of clients in trademark proceedings before the United States Trademark Trial and Appeal Board.

Fulfilling a longstanding desire to enter public service, Kevin also served as general counsel for the Illinois Governor’s Office of Management and Budget where he managed the legal challenges arising out of the $35 billion state budget.

Experience

Representative Engagements

  • Represented a consumer products company as a plaintiff in a series of lawsuits filed over a three-year period to protect its design patent and trade dress rights in an industry-leading product that brought a rash of imitators into the market.
  • Defended a leading housewares company against claims that a major new product launch infringed a competitor’s product configuration trade dress rights; resolved by defense verdict after eight-day trial.
  • Defended a commercial foodservice equipment manufacturer in a worldwide distributor dispute presenting tort, contract, and antitrust claims; resolved by favorable arbitration decision after arbitration hearing.
  • Represented a commercial foodservice equipment manufacturer in asserting and defending against patent infringement claims in cases involving a major competitor.
  • Represented a consumer products company as the plaintiff in a lawsuit asserting infringement of various intellectual property rights against a former customer and its new supplier, including patent infringement claims for the importation of a consumer product made abroad through use of a patented process.
  • Defended a manufacturer of janitorial equipment in lawsuit based upon state law claims that client misappropriated the plaintiff’s idea for an ergonomically improved product.
  • Defended manufacturer against lawsuit brought by terminated sales representative involving dispute over commissions due after termination.
  • Defended housewares company against patent infringement claims involving patents on use of drinking containers in vehicle cup holders; resolved through settlement after Markman claim construction hearing.
  • Secured a temporary restraining order and preliminary injunction on behalf of a consumer products company in a trademark infringement action against a large national retailer for its importation and sale of “grey” goods that the consumer products company made and distributed outside the United States.
  • Developed and implemented a trademark policing and enforcement strategy aimed at protecting a consumer product company’s flagship trademark, including proceedings in federal courts, the United States Trademark Trial and Appeal Board, and trademark offices throughout the world.
  • Counseled clients concerning compliance with state franchise, distribution, and antitrust laws, and potential breach of contract issues, when dealing with distributors, distributor terminations, and territorial realignments.
  • Advised clients concerning potential unfair competition aspects of their advertising and marketing programs.
  • Drafted and negotiated numerous distributor and sales representative agreements, manufacturing agreements, license agreements, design and development agreements, and sales contracts, involving a wide range of goods and services.

Credentials

Education

Northwestern University School of Law, J.D., 1981, cum laude, Editorial Board, Northwestern University Law Review

Loyola University of Chicago, B.A., 1978, magna cum laude

Bar Admissions

Illinois
U.S. District Court for the Northern District of Illinois

Professional Memberships

American Bar Association
Sections of Intellectual Property Law
Section of Business Law
Section of Litigation

Honors & Awards

Leading Lawyer in Intellectual Property Law and Commercial Litigation, Law Bulletin Media  Leading Lawyers (2007-2014, 2017)

Publications & Presentations

Kevin has given corporate in-house training presentations on intellectual property issues in product design and development and on patent law fundamentals and the America Invents Act.