Profile
Charles Mottier's practice involves all aspects of intellectual property law, including litigation, prosecution and counseling. His technical expertise is in mechanical engineering and fluid dynamics. He has extensive experience in formulating patent strategies and in managing patent portfolios, as well as in counseling and rendering opinions on patent validity, patent infringement, technology licensing, and the protection of trade secrets and other proprietary information. He has advised public and private companies in connection with sensitive corporate transactions, including asset purchases, mergers and acquisitions, joint ventures, licensing arrangements and employment issues. At Leydig, Mr. Mottier serves on the Board of Directors and chairs the Marketing Committee, having previously served in various aspects of the firm's management, including Chair of the Professional Development and Recruiting Committees. He regularly lectures and conducts workshops and seminars at universities, colleges, corporations and trade organizations, regarding patents, trademarks, copyrights, trade secrets and unfair competition. For nearly 15 years, he was a member of the adjunct faculty at the University of Illinois College of Engineering (Urbana-Champaign), where he lectured on intellectual property issues. Mr. Mottier received a Bachelor of Science degree in general engineering in 1978 and a J.D. degree in 1981 from the University of Illinois, where he was a James Scholar. In 1980, he received a certificate of advanced study in constitutional legal history from Magdalen College, Oxford University. While in law school, Mr. Mottier was a member of the Illinois Bar Journal.
About Charles Mottier
Admitted: 1981, Illinois
Professional Webpage: www.leydig.com/attorneys/charles-mottier
Honors and Awards:
- Recognized in The Legal 500
- Listed among the "Top Lawyers in Illinois in Intellectual Property Law" - Chicago Lawyer
- Selected by peers as a Leading Lawyer in Intellectual Property Law, Leading Lawyers Network
- AV® Peer Review Rating (Highest Rating), Martindale-Hubbell
Special Licenses/Certifications:
- Registered to practice before the U.S. Patent and Trademark Office
Bar/Professional Activity:
- The Lawyers Club of Chicago
- Intellectual Property Owner's Association (IPO)
- Intellectual Property Law Association of Chicago (IPLAC)
- American Intellectual Property Law Association (AIPLA)
- American Bar Association, Litigation and Personal Rights Sections
Pro bono/Community Service:
- Board of Directors, 2010 - Present - Theo Ubique Theatre, Chicago, Illinois
- Asian Arts Council, 2005 - Present; Board of Directors, 2010 - Present; Member, Acquisition Committee, 2007-2008 - The Art Institute of Chicago
- Literature and Arts Committee, 2005 - Present; Chair, Art Acquisition Subcommittee, 2007 - Present - University Club of Chicago
- Member of the Visiting Committee to the Department of Art History, 2009 - Present - The University of Chicago
- Neighborhood Writing Alliance, Secretary and Board Member, 2000-2007 - The NWA sponsors wiriting workshops and publishes The Journal of Ordinary Thought
- Member of the Visiting Committee on the Visual Arts, 2000-2009 - The University of Chicago
- Board of Governors, 2007 - Present - The Smart Museum, Chicago, Illinois
Scholarly Lectures and Writings:
- "The evolution of claim construction," Chicago Lawyer, May 2011
- "The changing order of battle," Chicago Lawyer, December 2010/January 2011
- "Provisional applications: best practices," Chicago Lawyer, August 2010
- "Perils of inventorship," Chicago Lawyer, October 2009
- "Design patents: clarified and strengthened," Chicago Lawyer, April 2009
- "Patent marking revisited," Chicago Lawyer, April 2010
Transactions:
- Poulsen Roser A/S v. Jackson & Perkins Wholesale, Inc., Glenda Hachenberger, et. al., Civil Action No. 1:10-cv-01894 (N.D. Ill.) (Action for trademark infringement)
- Philips Domestic Appliances and Personal Care B.V. v. Salton, Inc., Civil Action No. 03-CV-8496 (N.D. Ill. Eastern Division) (Action for patent infringement concerning single serve coffee maker)
- Medversant Technologies, LLC v. Morrisey Associates, Inc., Civil Action No. 2:09-cv-05031 (C. D. California) (Action for patent infringement)
- Kimberly-Clark Corporation v. Johnson & Johnson and Personal Products Company, Civil Action No. 81-C-5262 (N.D. Ill., Eastern Division); Kimberly-Clark Corporation v. Johnson & Johnson and Personal Products Company, Docket No. 85-1066 (Fed. Cir.) (Action for patent infringement)
- George L. Karapinka v. Union Carbide Corporation, Civil Action No. 83-CV-1682 (N.D. N.Y); George L. Karapinka v. Union Carbide Corporation, Docket No. 84-7916 (2d Cir.); George L. Karapinka v. Union Carbide Corporation,No. 84-1482 (on petition for certiorari by Petitioner Karapinka to the Supreme Court of the United States) (Action for ownership of intellectual property, breach of contract)
- Willi Moeller v. Ionetics, Inc., Appeal No. 85-2646 (Fed. Cir.) (Opinion of the Court dated June 4, 1986) (Appeal of action for patent infringement)
- American Hoist & Derrick Company v. The Manitowoc Company,Civil Action No. 86 C 09383 (N.D. Ill., Eastern Division) (Action for patent infringement)
- Elkay Manufacturing Company v. Blackhawk Molding Co., Inc., Walter E. Hidding, Douglas J. Hidding and Robert D. Hidding, Civil Action No. 98 C 4797 (N.D. Ill., Eastern Division) (Action for patent infringement and breach of contract)
- Lucas Aerospace Ltd. v. Unison Industries LP, Civil Action 93-525 MMS (D. Del.) (Actions for patent infringement and declaratory judgment by Lucas)
- Hawker Energy Products, Inc. and Hawker Power Systems, Inc. v. NorthStar Battery Company, LLC, et al., Case No. 101CC1261 (Circuit Court of Greene County, Missouri) (Action for misappropriation of trade secrets)
- Hawker Energy Products, Ltd. v. NorthStar Battery Company, LLC, et al., Civil Action No. 03-332-CV-S-JTM (W.D. Mo., Southern District) (Action for patent infringement of patent relating to battery terminals)
- GNB Incorporated v. Exide Corporation and General Battery Corporation, Civil Action No. 88-407 (D. Del.); GNB Battery Technologies, Inc. v. Exide Corporation and General Battery Corporation, Docket Nos. 95-1248, - 1348-1371 (Fed. Cir.) (Action for patent infringement)
- Synovate, Inc. v. Ashref Hashim, The Blackstone Group and The Blackstone Group, Inc., No. 03L003874 (Circuit Court of Cook County, Ill., Civil Dept., Law Division) (Action for breach of contract, payment of monies owed)
- SIG Stewart Systems, f/k/a SASIB Bakery North America, Inc. v. APV Baker, Civil Action No. 4:01 C 245 (E.D. Tex., Sherman Division)
- APV North America, Inc. v. SIG Simonazzi North America, Inc., Civil Action No. 01-840-JJF (D. Del.)
- Noss Company v. Hydrocyclone Technology, Inc., and Ivan T. Koltai, Civil Action No. C 84-974-A (N.D. Ga., Atlanta Division) (Action for patent infringement, breach of contract, misappropriation, unfair competition)
- Kimberly-Clark Corporation v. ICD Industries, Inc., Civil Action No. 82-1987 (E.D. Penn.) (Action for patent infringement)
- Invensys Building Systems, Inc., f/k/a Barber-Colman Company v. Streamline Software, Inc., David M. Stutt and Mary Stutt, 99 2286 FHX ROS (D. Arizona) (Action for copyright infringement, misappropriation of trade secrets and interference with contract rights)
- Honeywell Inc. v. The Foxboro Company, Civ. 96-1949 PHX RGS (D. Arizona) (Action for patent infringement)
- Robert M. Blumenthal and Andreas T. Melville v. Barber-Colman Holdings Corp., Barber-Colman Company and Surface Combustion, Inc., (Civil Action No. 90C20365) (N.D. Ill., Western Division); Blumenthal and Melville v. Barber-Colman Holdings Corp., Barber-Colman Company and Surface Combustion, Inc., Docket Nos. 93-1005, -1006 (Fed. Cir.) (Action for patent infringement)
- South African Inventions Development Corporation v. Blackhawk Molding Co., Inc., Civil Action No. 87 C 9188 (N.D. Ill., Eastern Division); related arbitration styled South African Inventions Development Corp. (SAIDCOR) and Blackhawk Molding Co., Inc.,Case No. 51-T199-0075-88T (American Arbitration Association) (Actions for patent infringement, breach of contract)
- Parker-Hannifin Corp. and Parker Intangibles LLC v. HydraForce, Inc., Civil Action No. 06-CV-3333 (N.D. Illinois) (Action for infringement of valve patent)
- Appleton Electric LLC v. Cooper Industries, Inc., Civil Action No. 00 C 5463 (N.D. Ill., Eastern Division) (Action for patent infringement)
- Custom Cutlery, Inc. v. Clear Lam Packaging, Inc., Civil Action No. 1:09-cv-3082 (N.D. Ill., Eastern Division)(Action for infringement of design patent)
- KAB Enterprise Co., Ltd. v. Ursich Electrical Products, Inc.;Ursich Electrical Products, Inc. v. KAB Enterprise Co., Ltd. and Woods Industries, Inc. et al. Civil Action No. 1:07-cv-02864 (N.D. Ill., Eastern Division)(Action for infringement of electrical plug patent)
- The Coleman Company, Inc. v. Dollar Tree Stores, Inc., and Dollar Tree Distribution, Inc., Civil Action No. 03-1369-WEB (D. Kan.) (Action for infringement of design patent)
- Floyd Minks v. Unison Industries, Inc., (Case No. CI-89-2939) (Circuit Court of the Ninth Judicial Circuit,Osceola County, Florida) (Action for breach of contract, misappropriation of trade secrets)
- Unison Industries LP v. Lucas Industries PLC, Civil Action 93 C 20249 (N.D. Ill., Western Div.) (Action for patent infringement)
- The Foxboro Company v. Honeywell, Inc., Civil Action No. 96-10734-RCL (D. Mass.)(Action for patent infringement, tortious interference with contract)
- Invensys Building Systems, Inc. v. Tridium, Inc., Civil Action No. 00 C 50168 (N.D. Ill., Western Division) (Action for copyright infringement, misappropriation of trade secrets, interference with contract rights)
- Tieman Development B.V. and Optelec U.S., Inc. v. Freedom Scientific, Inc.,Civil Action No. 06CV2802 (N.D. Illinois, Eastern Division)
- Newell Operating Company v. Article, Inc.,Civil Action No. 06C50101 (N.D. Ill., Western Division)(Action for infringement of design patent)
- Concord Brands, ULC et al. v. Taste of Nature, Inc.,Civil Action No. 1:07-cv-00059 (N.D. Illinois)
- Kiss Nail Products, Inc. v. Pacific World Corporation,Civil Action No. 07-cv-912 (U.S. District Court, E.D. NY)
- KMC Exim Corporation v. Pacific World Corporation, Civil Action No. 07-cv-913 (U.S. District Court, E.D. N.Y.)
Newsletters:
- Mr. Mottier has been an editor of and contributor to the firm's quarterly Newsletter since 2001.
Educational Background:
- University of Illinois, B.S. in General Engineering, 1978 - James Scholar