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Charles Shifley

Banner & Witcoff, Ltd.

cshifley@bannerwitcoff.com

For 25 years, Charles Shifley has concentrated on intellectual property cases and trials. In 2002, Charles and a Banner & Witcoff team successfully enforced a patent in Texas for a start up company against a multimillion-dollar defense effort. Charles also began defense in Boston of an Internet subscription delivery company, and ended defense in Chicago of a rail supply company. Charles enjoys juries and fast-paced lawsuits; in his last jury trial, Charles and his trial team proved willful patent infringement and had a permanent injunction in place 11 months after filing suit. Earlier, a trial team under his direction won a $6 million dollar jury verdict for willful patent and copyright infringement and breach of a shrink-wrap agreement, affirmed on appeal. A case report is at 302 F.3d 1334. Charles also won a multi-million dollar jury award for willful patent infringement and attorneys fees in Virginia's Rocket Docket, and gained affirmance in the Federal Circuit. See 9 F.Supp.2d 601, 1999 U.S. App. LEXIS 8584, and 189 F.3d 1327. Charles was also co-counsel in a bench trial defeating claims of patent infringement, see 65 F.Supp.2d 757, and defended the judgment in the Federal Circuit, see 56 USPQ2d 1445. Earlier still, and at a jury trial in Tennessee, Charles and a team of Banner & Witcoff lawyers won an important permanent injunction and million dollar patent infringement award for IPIX. The company went public in an $80 million IPO based in part on the strength of its intellectual property. The injunction and award were affirmed, as at 61 USPQ2d 1152.

Also, Charles and a team of B&W lawyers gained a preliminary injunction on a once-lapsed patent, reported at 56 USPQ2d 1329. Charles and a team also gained a preliminary injunction enforcing a just-issued patent, see 53 USPQ2d 1547. Earlier, Charles directed a team of lawyers for an arbitration in the digital video disk and movie industries, within 16 days of notice of arbitration. With $5 million in controversy, the arbitration settled, in major part because of the speed and thoroughness of the B&W preparation. Charles also gained two reported trademark preliminary injunctions, see 48 USPQ2d 1299 and 45 USPQ2d 1846.

Charles has served as lead and co-counsel in numerous successful trials for Fortune 100 and additional companies, across the country. Technical subjects have included Internet delivery software; digital video disks; photochemistry; photographic software; engines, electronic components, and automotive hardware; human heart pacemakers and defibrillators; welding equipment; computerized controls; high technology valves; industrial franchise operations; high-technology metal casting and consumer goods. He has generated several creative, large claims for damages, including one for $30 million based on $300,000 in accused sales. He has been consistently sensitive to costs and client communication.

In addition, Charles has also developed capable settlement, negotiation, patent procurement and interference skills, and counseled, prepared opinions, and negotiated many valuable contracts concerning patents, trademarks, copyrights, trade secrets, and franchises. He is proud to have brought an individual inventor patent license royalties in excess of $1 million, for a single invention.

Mr. Shifley lectures on patent litigation and related matters, and authors articles espousing critical thinking in handling intellectual property concerns. He has taught trial and appellate advocacy at John Marshall and Chicago Kent Colleges of Law with Federal Circuit Court of Appeals Judge Paul Michel since 1998, and has taught Law for Engineering Managers at Northwestern University since 1984. He is an Adjunct Professor at Northwestern University, IIT Kent Law School, and John Marshall Law School.

Charles earned a Bachelor of Science degree in Mechanical Engineering, summa cum laude, and a Juris Doctor degree, cum laude, both from The Ohio State University.

Mr. Shifley practices in the Chicago office of Banner & Witcoff, Ltd.


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