About Banner Witcoff
Chicago-based IP boutique firm Banner & Witcoff is unique not only for its status as a top firm in its field, but also for its role in shaping IP law by having represented defendants in groundbreaking Supreme Court cases. The firm, which has additional offices in Boston, Portland and Washington, DC, continues to be involved in developments in its field by representing top companies like Allstate Insurance, Bank of America, Kimberly-Clark, Microsoft, Nike, and Toshiba.
From Crops to Patents and Trademarks
Though it's been known as Banner & Witcoff since 1996, the firm's beginnings date all the way back to 1920. Back in those days, many of the firm's early clients were farmers and paid for their legal services in crops and produce. Its Chicago office, the location of its current headquarters, opened in 1937, where the firm began to represent clients like Lenox, Honeywell and Meredith Publishing. The firm's Washington, D.C. office opened in 1965. An office in Boston followed 20 years later, in 1985, and its fourth office, in Portland, opened in 1997.
In 1978, name founder Don Banner was appointed Commissioner of the United States Patent and Trademark Office, kicking off a tradition of expertise in USPTO policies among firm attorneys. This expertise has been widely recognized; in 2017 Banner & Witcoff received a National Tier 1 ranking in intellectual property litigation, patent litigation and patent law in U.S. News - Best Lawyers’ “Best Law Firms”and was ranked a Top IP firm by Chambers and Partners and a top trademark firm by the World Trademark Review 1000.
A Role in History
In 1980, Banner & Witcoff won verdicts for defendants in the history-making case Diamond v. Chakrabarty, which established that the bacterium a General Electric engineer developed to break down crude oil-and living, genetically-altered organisms in general-could be patented. The firm made history again in 2001 with New York Times v. Tasini, in which the court ruled that publishing articles by freelance journalists that were licensed specifically for print editions ofthe New York Times and other print publications in electronic databases such as LexisNexis or University Microfilms International was a violation of those journalists' copyrights.
True to its values as an IP firm, Banner & Witcoff stands at the forefront of innovation and has a special history in the field of computer technology. Founder Sheldon Witcoff was the first examiner of patent applications for electronic computers for the USPTO in 1949. In 1973, the firm participated in a nine-month trial, one of the longest in history, to prove that John Atanasoff was the first inventor of the electric computer. Banner & Witcoff also pioneered the use of computers in courtroom pre-trial discovery and document management in 1968.
Making and Breaking Records
Banner & Witcoff broke its own record for the most design patent grants in a single year. According to U.S. Patent and Trademark Office records, the firm procured 1,032 U.S. design patents in 2016. The firm set the prior record with 959 U.S. design patents in 2008. Also, for the 14th consecutive year, Banner & Witcoff obtained more U.S. design patents than any other law firm in the United States. The firm worked to protect many popular and prominent designs for longtime clients NIKE and Microsoft, and continued to expand its design patent practice by procuring portfolios of 30 or more design patents for 25 different companies, including Electrolux, Nokia and Toshiba.
IN THE NEWS
Top IPR Petition-Filer
Banner & Witcoff was recognized for filing more inter partes review petitions than any other law firm in the first half of 2017. The firm was recognized by Managing Intellectual Property for filing 44 IPR petitions on behalf of client Comcast Corp. during this period. According to MIP, Comcast filed the IPR petitions in response to Rovi suing Comcast in the U.S. District Court for the Eastern District of Texas in April last year. Fifteen patents were at issue in those proceedings, and the case remains pending in the Southern District of New York after a successful motion to transfer.
Banner & Witcoff was recognized by Law360 as one of the law firms filing the most trademark lawsuits over the second quarter of 2017. According to Law360, “Banner & Witcoff, a Chicago-based firm with nearly 100 attorneys in four offices, filed 14 new cases in the second quarter, 12 on behalf of Yeti — a brand of high-end coolers and thermoses that has boomed in popularity in recent years.”
Joseph M. Potenza is featured in the National Law Journal’s “Intellectual Property Trailblazers,” a special issue that recognizes attorneys who have made their mark on practice, policy and technological advancements in intellectual property. Mr. Potenza was recognized for his 40-plus-year involvement with the American Bar Association, where he currently serves in the House of Delegates. He was recently involved in the ABA’s submission of an amicus brief in the Supreme Court case, TC Heartland v. Kraft, and persuaded the ABA to support Myriad Genetics’ bid to retain patents against the Association for Molecular Pathology in their Supreme Court case.
Banner & Witcoff selected Moriah Smoot as the latest recipient of the Donald W. Banner Diversity Scholarship for law students and provided her with $5,000 for her upcoming fall semester of law school. She is currently enrolled at the University of Alabama School of Law. Since its inception in 2008, this scholarship program has awarded $85,000 in tuition to law students.
71 South Wacker Drive
Chicago, IL 60606
Phone: (312) 463-5000
President: Chunhsi Andy Mu
Recruiting Chairs: Katie Laatsch Fink and Rajit Kapur
1st year: $155,000
Summer associate: $3,500/week (1L), $3,500/week (2L)
Summer Associate Offers:
2 out of 2 (2Ls) (2016)
Chicago, IL (HQ)
Chemistry & Chemical Engineering
Counseling, Opinions & Licensing
Electrical & Computer Technologies
Internet, E-Commerce & Business Methods
Life Sciences & Pharmaceuticals
Patent Post-Issuance Proceedings