Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

Managing Intellectual Property published its annual list of the fifty most powerful people in the international IP community (hat tip to Patent Docs for pointing it out).  Click here for the list (subscription or two week free trial sign up required).  There were two honorees with Chicago connections:

• Rhonda Steele (#8) -- Steele is both the president of INTA and Asia-Pacific marketing properties manager for Mars.  While Steele does not necessarily work in Chicago or on Chicago-specific IP, Mars makes Fun Size versions of its 3 Musketeers, Snickers and Milky Way candy bars in Chicago.
  
• Jim Malackowski (#34) -- Malackowski is a founder of Chicago-based Ocean Tomo, as well as its president and CEO.  Among other things, Ocean Tomo is well known for its patent auctions (at leas the last several of which have each totalled more than $10M in sales), IP valuation services and damages expert work.

These IP luminaries share the honor with Second Life avatars (#1), the PTO's Director John Dudas (#4), the Federal Circuit's Judge Michel (#9), Harry Potter (#14),and  blogger and Google copyright counsel William Patry, of the Patry Copyright Blog.

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IP Law & Business recently named its top 50 IP lawyers under 45 years old (free registration required).  Two of those 50 are Chicagoans -- David Callahan and James Malackowski.

• David Callahan is an IP litigator and partner at Kirkland & Ellis.  As I have mentioned before, I had the opportunity to work with Callahan early in my career.  So, I can confirm that he is a top notch litigator.  Here is what IP Law & Business said about Callahan:

A political science major from the University of Chicago, David Callahan learned electronic warfare, including cryptography, as a U.S. Army Reserve captain. The military discipline has served him well. A University of Michigan Law School grad, Callahan has commanded the defense in key patent infringement wins for 3M, Amazon.com, and Gast Manufacturing in cases covering everything from one-click Internet payment systems to chewing gum additives and dental compounds. He has excelled at big-ticket defense cases involving multiple patents and parties, where his leadership and organizational skills-to say nothing of his legal marksmanship-force plaintiffs to duck.

• James Malackowski is the President, CEO and founder of  Ocean Tomo, a Chicago-based and IP-focused merchant banc.  Here is what IP Law & Business said about Malackowski:

This University of Notre Dame-trained CPA has made a name as a patent market-maker. Twenty years ago he cofounded a firm that did patent valuations. In 2003 Ocean Tomo started offering investment banking services, and it broke new ground in 2006 with the first live auction for IP. The company has conducted six so far-the most recent in April in San Francisco-that have generated $70 million in transactions, including the $15 million sale of guitarist Jimi Hendrix's catalog and the $6 million sale of patents related to digital systems media and management. The latest innovation from Malackowski? He is trying to market insurance that would lessen the cost to companies of patent troll attacks.

Congratulations to both Callahan and Malackowski.  The honor is well deserved for both men.

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Ocean Tomo recently had their first "town hall meeting" to discuss its plans to open an IP Enterprise Zone (the "Zone") in Chicago -- which sources say had an impressive attendance.  Ocean Tomo plans to choose a site in downtown Chicago where it plans to house over one hundred representatives of companies interested in buying and/or selling portions of their IP portfolios.  It sounds like it will be the equivalent of a very sophisticated farmers' market.  IP professionals will bring their goods to the Zone while others come to look for IP that they want or need.  You can read more about it here.  Ocean Tomo plans to open the Zone in mid-2008 and is partnering with city and state government, as well as the Chicago Chamber of Commerce to turn its vision of the Zone into a reality.

In addition to housing IP professionals and facilitating deal-making, Ocean Tomo also expects to open the Intellectual Property Exchange Chicago ("IPX Chicago"), which will be the first securities exchange with an IP focus in the Zone.    IPX Chicago is expected to begin operating in Q1 2010.  Ocean Tomo explains its IPX Chicago as follows:

IPX Chicago will enable investor and company participation in a broad spectrum of IP-related financial products such as qualified equity listing/co-listing; IP related indexes, futures and options; IP backed bonds and securitizations; patent rich company IPOs; and, new IP-based exchange-traded products.

Ocean Tomo is also seeking responses to a survey regarding interest in the Zone.  If you are interested in taking the survey, click on the top link on this page.  The Zone appears to be a very exciting idea with some momentum and it could be great for Chicago generally and Chicago's IP community specifically.

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Last Thursday, Ocean Tomo held its third live patent auction in Chicago.  According to the Chicago Sun-Times report, nearly 300 people attended the auction live (I understand others bid by telephone) and that 50 patents were offered for bidding, generating $11.4M.  The Sun-Times also reports that Telecommunications Corp. sold a video-on-demand patent portfolio for $2.75M.  And the Infinite Monkey Theorem blog reports that an anonymous bidder paid $2.6M for a mobile social networking patent.  According to the IMT blog, the patent "bridge[s] the online into the real world, the patent's main claim covers the use of mobile location information in conjunction with online information. This is a broad application which provide a location-based boost to gaming as well as networking sites like MySpace or upstart mobile IM players like Twitter."

Ocean Tomo's next live patent auction will be in Chicago this October.

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