William E. Hartgering

T: 312-655-0555
F: 312-655-0644
Intellectual Property
A full time mediator and arbitrator since 1981, Bill established the Chicago JAMS/ENDISPUTE office in 1982. His experience includes the resolution of over 1,000 complex matters arising in 50 states and foreign countries, appointments by federal and state judges in 10 states, co-mediations with a sitting federal judge and a variety of experts, as well as training with state, federal, and foreign governments in Asia and Eastern Europe.

Prior to 1981, he practiced law, concentrating on commercial, employment, and insurance related litigation, including matters involving patents and other intellectual property issues.

Supplementary Matters

  • Dispute Management/Legal Experience
    Trademark/Tradename
    • Nationwide. Negotiation of corporate name after merger. Senior officer and founder of regional office of professional service company which merged with larger entity with successful locations in other areas of the country. Worked with joint committee and outside consultant to determine new name.
    Patent Litigation
    • Illinois. 8-figure patent litigation. Co-counsel in dispute involving early shrink wrap and extruded plastic “six-pack” containers.
    • New York/Illinois. Mediation involving patent and licensing issues relating to state-of-art sewer pumps

Representative Matters

  • Nationwide Intellectual Property/Technology Matters
    Patent Infringement, Invalidity, Claims Construction
    • Illinois/Maryland. Mediation of several proposed business solutions involving two parties to a pending appeal of a 7-figure patent infringement judgment, third parties affected by the judgment, and opportunities creating benefits for one company not directly paid for by the other
    • Illinois. Cross claims involving 6 automotive patents, $8 figure damages
    • Massachusetts. Co-mediation with sitting Federal Judge involving claim construction, infringement, and “inventor” issues
    • MDL Litigation. Involving drug patents, patent invalidity, claims construction, and related issues
    Patent/Licensing of Software
    • Indiana/Illinois/Ohio. Mediation of separate patent infringement, licensing, and new product issues involving Fortune 50 companies
    • California/Illinois. Mediation of complex software licensing and royalty issues involving state-of-the-art library software
    • Illinois. Mediation involving installation of software and license issues
    • California/Illinois. Mediation, software licensing, and scope of limitation of liability issues involving healthcare software
    • Arbitration, patent and licensing issues relating to automated payment services
    Copyright/License/IRS Subpoena
    • Texas/Illinois/Washington, D.C. Pending mediation involving IRS subpoena enforcement proceeding involving the Executable Copy and Source Code of third-party software used in two clients’ audits. Cases of first impression involving an IRS request for the source code and the tension between the protection of the Copyright Act, the broad scope of IRS subpoena power, and the negotiation of limited access agreements.
    Scope of International License
    • Pennsylvania/Europe. Dispute involving Founder/Seller and Venture Group/Buyer of a software firm and the negotiation of a severance agreement involving European distribution rights of multilingual translation software and the largest customer of both parties which directly participated in the mediation
    Royalty Contract
    • Illinois. Various matters; interpretation of a software/royalty agreement
    Fraud on Patent Office
    • Two bitter, high-stakes matters involving an extensive record and allegations of fraud on the Patent Office
    Trademark
    • Mediations involving trademark, trade name, and related issues for such parties as manufacturer of high-end clothing and shoe manufacturer, producer of wine and spirits, chewing tobacco manufacturers, and an international play

Honors, Memberships, and Professional Activities

  • Honors
    • Ranked among the Top 10 ADR Neutrals in Illinois, Leading Lawyers, 2014
    • Recommended “Leading Lawyer” Commercial ADR Law
  • Memberships & Professional Activites
    • Former Adjunct Faculty, Northwestern University
      • Kellogg School of Management
      • Pritzker School of Law
    • Trainer, 30 forums in 15 states, Hong Kong, Latvia, and Lithuania
    • Member, Regional Utility Mediation/Arbitration Outage Allocation Panels
    • Active Member, ABA Section of Dispute Resolution and SPIDR (now ACR), 1981-present
    • Member, Unitarian Church of Evanston
  • ADR Profile

Background and Education

  • J.D., Northwestern University (Law Review, First Place, Moot Court Competition; National Moot Court team), 1975
  • B.S., cum laude, Political Science, Claremont McKenna College, Claremont, CA, 1972
  • Born 1949, Two children, Extensive travel in Japan, Hong Kong, South Africa, Asian/European Russia, Eastern/Western Europe, Caribbean, Central America, and each of the 50 United States

Disclaimer

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