Reid Huefner has been practicing as an 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. In 2016, Reid left “Big Law’ to join 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 PTAB, 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 interests 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:
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.
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:
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, and licensing or purchasing third party intellectual property. Reid has 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:
AGS, Aker BioMarine, Auriga, Baxter Healthcare, Baxter International, BP, Cisco, Colgate-Palmolive, Dow Chemical, Energy Future Holdings, General Motors, Indorama, Intel, Kapsch, Keystone Automotive, LKQ Corp., Loren Cook, Massarelli’s, Mark IV, Motorola, Nest Labs (now Google), Netgear, Nutraceutical, OtterBox, The Owings Gallery, Pfizer, Ranir, Realviews Photography (Cesar Russ), Restorsea, Sandoz, Sun Microsystems (now Oracle), Swagway, U.S. Auto Parts (now Carparts.com), WARN Industries, Wowza, Zoetis, various Venture Capital and Private Equity funds and their portfolio companies
Past-President, J. Reuben Clark Law Society, Chicago Chapter
Past-chair, U.S. Patents Committee, Intellectual Property Law Association of Chicago
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
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)
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
University of Utah, 2000
B.S. Chem. Eng.
Recognized by “Best Lawyers” (2023, 2024)
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
Illinois; U.S. Patent and Trademark Office
CAFC Allows More “Standing” Room In Article III Cases, Intel Corp. v. Qualcomm Inc., No. 2020-1664, 2021 WL 6122360 (Fed. Cir. Dec. 28, 2021) & Intel Corp. v. Qualcomm Inc., No. 2020-1828, 2021 WL 6122434 (Fed. Cir. Dec. 28, 2021)
Alice Still Decimating “Groundbreaking” Developments, Cardionet, LLC v. Infobionic, Inc., 2020-2123, 2020-2150 (Fed. Cir. Oct. 29, 2021) & USADATA Inc., v. DataWidget LLC, cv-21-00526 (D. Ariz. November 2, 2021)
The Article of Manufacture Requirement under 35 USC 371: USPTO seeks insights in response to technology advances, Mylan Pharmaceuticals, Inc. v. Sanofi-Aventis Deutschland GmbH, IPR2018-01679, Paper No. 55 (P.T.A.B. Oct. 16, 2019), IPR2018-01680, Paper No. 65 (P.T.A.B. Oct. 16, 2019), and IPR2018-01682, Paper No. 62 (P.T.A.B. Oct. 16, 2019).
That’s the Way the Trade Dress Crumbles: Third Circuit Holds No Trade Dress Protection for Pocky Sticks, Ezaki Glico Kabushiki Kaisha v. Lotte Int’l Am. Corp., No. 19-3010, 2020 WL 5951113 (3d Cir. Oct. 8, 2020)
Legitimate Product Review or Paid Product Promotion? Ninth Circuit Says Commercial Speech Plausibly Alleged, Mylan Pharmaceuticals, Inc. v. Sanofi-Aventis Deutschland GmbH, IPR2018-01679, Paper No. 55 (P.T.A.B. Oct. 16, 2019), IPR2018-01680, Paper No. 65 (P.T.A.B. Oct. 16, 2019), and IPR2018-01682, Paper No. 62 (P.T.A.B. Oct. 16, 2019).
Product Development Standing and Lessons on Teaching Away, Mylan Pharmaceuticals, Inc. v. Sanofi-Aventis Deutschland GmbH, IPR2018-01679, Paper No. 55 (P.T.A.B. Oct. 16, 2019), IPR2018-01680, Paper No. 65 (P.T.A.B. Oct. 16, 2019), and IPR2018-01682, Paper No. 62 (P.T.A.B. Oct. 16, 2019).
An Invalidity Challenge is not a Changed Condition: Federal Circuit Affirms Exclusion Order Rescission Petition Denial, Mayborn Grp., Ltd. v. Int’l Trade Comm’n, No. 2019-2077, 2020 WL 4006615 (Fed. Cir. July 16, 2020)
Got Fees? You’ve got some explaining to do., Amneal Pharm., LLC v. Almirall, LLC, No. 2020-1106, 2020 WL 2961939 (Fed. Cir. June 4, 2020) Munchkin, Inc. v. Luv N’ Care, Ltd., No. 2019-1454 (Fed. Cir. June 8, 2020)
Hot Sauce Trademark Infringement Order Creates Spicy Implications for Marijuana-Related Products, Tapatio Foods, LLC, v. Sulaiman Waleed Rodriguez, No. 119CV00335DADSKO, 2019 WL 6168416 (E.D. Cal. Nov. 20, 2019)
Guiding Light to Motion to Amend?, Mylan Pharmaceuticals, Inc. v. Sanofi-Aventis Deutschland GmbH, IPR2018-01679, Paper No. 55 (P.T.A.B. Oct. 16, 2019), IPR2018-01680, Paper No. 65 (P.T.A.B. Oct. 16, 2019), and IPR2018-01682, Paper No. 62 (P.T.A.B. Oct. 16, 2019).
Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board, Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board (Dkt. No. PTO-P-2018-0036)