Reid Huefner

Education

Brigham Young University,
J. Reuben Clark Law School, J.D., 2006 (with Honors)

Brigham Young University, Marriott School of Management,
M.B.A. Finance, 2006
(with Honors)

University of Utah, 2000
B.S. Chem. Eng.
B.S. Chemistry
(cum laude)

Distinctions

Pro Bono Volunteer Attorney of the Year Award, Lawyers’ Committee for Better Housing (2009)

Founding Member and Financial and Legal Officer of Cougar Capital, a University-sponsored venture capital/private equity fund

Second Place, 2006 Venture Capital Investment Competition, Irvine, CA

Semi-Finalist, 2006 Giles Rich IP Moot Court Regional Competition, San Francisco, CA

Best Brief and Winning Team, 2006 Giles Rich IP Moot Court, Utah State Competition

BYU Law Review, Editor

Licenses

Illinois; U.S. Patent and Trademark Office

Reid Huefner has been practicing as intellectual property and technology attorney for more than 14 years.  Reid started his career at one of the largest, most successful general practice and intellectual property firms in the world, where he practiced for roughly 10 years and was elevated to and held the position of partner for four years.  However, in 2016, Reid joined three of his former Big Law partners to build and grow a top-notch boutique intellectual property law firm.

Reid’s practice includes litigation, transactional, and opinion work concerning all aspects of intellectual property law.  In addition to providing litigation services to clients in a host of venues, including federal and state district and appellate court, the ITC, the USPTO, and U.S. Customs, Reid has also provided intellectual property support in a variety of transactional contexts, such as software licensing, research and development and joint venture agreements, outsourcing, mergers, acquisitions, and bankruptcy.  Reid has both depth and breadth of experience counselling clients on defending and protecting their patent, trade secret, copyright, and trademark assets in both litigation and transaction contexts.

Reid’s practice includes patent, trade secret, copyright, and trademark work for industry-leading clients in the following technological areas:

  • ANDA/Hatch-Waxman
  • Automotive
  • Chemical and oil
  • Computer software and hardware
  • Consumer products
  • Dental products, both chemical and mechanical
  • Gaming systems
  • HVAC equipment
  • Mechanical devices
  • Medical devices and products
  • Pharmaceuticals and nutraceuticals
  • Radio frequency identification (RFID)
  • Silicon ingot manufacturing
  • Telecommunications and wireless

Reid has also first chaired many pro bono cases, which have focused primarily on residential real estate disputes, artists involved in intellectual property disputes, and violations of the Illinois Freedom of Information Act.

REPRESENTATIVE MATTERS
As a litigator, Reid has handled many high-stakes patent, copyright, trademark, trade secret, restrictive covenant, unfair competition, false advertising, and antitrust matters.  Some of those matters include:

  • a litigation between two start-up companies having multiple patents on competing running accessory technologies where, as lead counsel for his defendant client, Reid negotiated a settlement that resulted in a royalty license for his client;
  • a multi-patent defensive matter for a medical product’s company where Irwin IP defeated a Fortune 50 company’s effort to enjoin sales of its client’s medical product for allegedly infringing patents that had survived numerous prior invalidity challenges and that were the foundation for a $1 billion/year market;
  • an extensive, expedited evidentiary hearing, wherein Irwin IP obtained a temporary restraining order and a preliminary injunction precluding Customs and Border Protection (“CBP”) from imposing a bonding requirement against an importer that would have caused the importer to cease operations and cost hundreds of employees their jobs;
  • an offensive matter against CBP wherein Irwin IP obtained a rare order requiring CBP to immediately move forward with seizure actions it had been intentionally delaying;
  • litigation brought seeking a declaratory judgment against trademark infringement and further asserting breach of contract, RICO, and antitrust claims; successfully defended a motion to dismiss, resulting in a report and recommendation by the Magistrate Judge that recommended denying the motion to dismiss in its entirety;
  • various matters for a hoverboard manufacturer involving patent and trademark infringement, false certification mark, monopolization, and inequitable conduct claims before District Court and the Int’l Trade Commission and counselled the client regarding clearance/freedom to operate, product development, certification requirements, and settlement;
  • two patent infringement actions representing a market-leading private label dental supply manufacturer and related counselled with the client regarding clearance/freedom to operate, product development, and licensing;
  • a litigation between an entrepreneur and his former business partner regarding a restrictive covenant and valuation of stock options;
  • a patent litigation between two major pharmaceutical companies regarding animal treatment products, representing the defendants, including defeating early motions for a temporary restraining order that sought to block the client’s imminent launch of a new product;
  • various plaintiff-side ANDA litigations;
  • a complex, multidistrict litigation for a major auto manufacturer related to various recalls;
  • a bankruptcy proceeding for one of the largest generator, distributor, and certified retail providers of electricity and 70 of its affiliates in their Chapter 11 cases in the U.S. Bankruptcy Court;
  • a six-patent litigation matter where a startup was defending its “smart” home CO/smoke alarm product from an industry leader wherein a preliminary injunction was defeated;
  • a patent infringement case involving multiple patents relating to active and passive polymer barrier technologies;
  • a case defending against patent infringement and trade secret misappropriation allegations involving technologies relating to methods of making polyethylene terephthalate (PET) resins and polyesters;
  • a consolidated multi-district litigation representing three major wireless product manufacturers, as well as scores of their customers, covering nearly two dozen patents relating to allegations of infringement based upon implementation of the 802.11 wireless standard; the case settled shortly after a favorable FRAND licensing rate ruling.
  • an offensive patent infringement case for the plaintiff involving four patents relating to automatic vehicle identification systems and open-road tolling.
  • a patent infringement case representing defendant against infringement allegations relating to two patents covering CDMA and 802.11 wireless communications standards;
  • a state court breach of contract case, representing a major chemical company plaintiff, relating to a joint development effort in liquid redox chemistry; the case settled on favorable terms shortly before trial;
  • a patent infringement case involving defense against alleged infringement of two patents relating to 802.11 wireless communications standards;
  • a nine-patent offensive actions seeking to protect our medical device client’s business against the launch of a competing product for peritoneal dialysis;
  • a patent infringement case defending against claims of infringement of mixed flow and in-line centrifugal fan technologies;
  • a patent infringement case defending our client against allegations involving processor-related architecture and software technologies.
  • a trade secret and patent case involving therapeutic active ingredients in dentifrice and other oral compositions;
  • an offensive matter brought against a competitor for their improper scraping of the client’s website data culminating in expedited injunctive relief and recovery of fees associated with bringing the action;
  • an action defending auction purchasers of a fine art painting against claims of replevin, detinue, etc., based upon the assertion that the painting was stolen; the case settled favorably;
  • a pro bono case where, as lead counsel, an adverse judgment against the client’s efforts to obtain records under Illinois’ Freedom of Information Act (FOIA) was successfully appealed;
  • a pro bono case where, as lead counsel, the defendant non-profit client successfully defeated allegations of breach of contract and quantum meruit damages;
  • a pro bono case where family members of a famous designer successfully rebuffed allegations of conversion and replevin;
  • a pro bono case where defendants overcame allegations of replevin and conversion and accounting; the case settled on terms that included the assignment of all intellectual property rights to defendants;
  • a pro bono appeal on behalf of a refugee before the 11th Circuit to obtain a rehearing en banc regarding procedural and substantive errors by Immigration Court, the Board of Immigration Appeals, and the Eleventh Circuit Court of Appeals;
  • Numerous pro bono representations through the Lawyers’ Committee for Better Housing: Represented, to assist LCBH clients in disputes against their landlords.

Furthermore, Reid has been counsel in over a dozen Patent Office review proceedings, including successfully petitioning the PTAB to institute an IPR on a patent touted as the foundation for a product line generating over a billion dollars per year and that had previously withstood numerous other validity challenges before the Patent Office and several federal court litigations.

Finally, Reid also works with clients to strengthen their intellectual property portfolios, including through improving protection of key products and technologies, broadening existing intellectual property portfolios, licensing or purchasing third party intellectual property.  Reid has also handled myriad transactional and counselling projects, including supporting the purchase and sale of companies, negotiating terms for strategic alliance and supplier/developer relationships, and counselling companies regarding freedom to operate.  Some of those matters include:

  • a freedom to operate review and advising a prospective investor on the competitive patent landscape and associated risk exposure of a potential portfolio company specializing in research laboratory equipment and services;
  • advising a prospective investor on the intellectual property position of a potential biotechnology portfolio company specializing in EPO in relation to its chief competitor in the marketplace;
  • representing the acquiring corporation in connection with the potential acquisition of intellectual property relating to medical devices and pharmaceutical compositions;
  • representing the acquiring private equity entity in connection with its acquisition of an equity interest and voting control in the international leading manufacturer and developer of professional and consumer tooth whitening products and dental devices;
  • representing the acquiring private equity entity in connection with its purchase of a regional physical therapy business and its business name and trademarks;
  • handling all the intellectual property aspects of the spin-off of an international printer toner cartridge subsidiary business from its parent company;
  • representing the acquiring private equity entity in connection with its acquisition of a company that provides software solutions with multi-carrier, multi-line consolidated insurance billing capabilities; and
  • representing the acquiring private equity entity in connection with its acquisition of a company that provides software solutions that automate the sales, service, and processing of health insurance and group benefits.

REPRESENTATIVE CLIENTS
AGS, Aker BioMarine, Auriga, Baxter Healthcare, Baxter International, BP, Colgate-Palmolive, Dow Chemical, Energy Future Holdings, General Motors, Indorama, Intel, Cisco, Kapsch, LKQ, Loren Cook, Massarelli’s, Mark IV, Motorola, Nest Labs (now Google), Netgear, Nutraceutical, OtterBox, Pfizer, Ranir, Restorsea, Sandoz, Sun Microsystems, Swagway, U.S. Auto Parts, Wowza, Zoetis, various Venture Capital and Private Equity funds and their portfolio companies

MEMBERSHIPS & AFFILIATIONS
Co-chair, U.S. Patents Committee, Intellectual Property Law Association of Chicago
President-elect, J. Reuben Clark Law Society, Chicago Chapter

COURT ADMISSIONS
Central District of California
Northern District of California
District of Delaware
Southern District of Georgia
Northern District of Illinois
Western District of Michigan
District of New Jersey
Southern District of New York
Eastern District of Pennsylvania
Eastern District of Texas
Western District of Wisconsin
International Trade Commission
U.S. Court of International Trade
Eleventh Circuit

PRIOR EXPERIENCE
Partner, Kirkland & Ellis, Chicago, IL (2013-2016)
Associate, Kirkland & Ellis, Chicago, IL (2006-2013)
Public Interest Law Initiative Fellow, Citizen Advocacy Center, Elmhurst, IL (2007)
Law Clerk, Workman Nydegger, Salt Lake City, UT (2005-2006)
Intern, Chambers of the Honorable Judge Randall Rader, United States Court of Appeals for the Federal Circuit (2005)
Intern, Chambers of the Honorable Judge Marian Blank Horn, United Stated Court of Federal Claims (2004)
Chemical Engineer, Abbott Laboratories, Chicago, IL (2000-2003)

LANGUAGES
Spanish