Areas of Practice
- Federal Circuit
- Intellectual Property
- IP Licensing
- IP Litigation
- Patent Litigation
- Patent Office Practice
- Patent: Chemistry
- Patent: Mechanical
- Patent: Medical Devices
- Patent: Nanotechnologies
- Patent: Pharmaceuticals & Biotechnology
- Section 337/ITC Litigation
- Trade Secrets
- DePaul University College of Law, J.D., 1986
- Michigan Technological University, M.S., Chemical Engineering, 1980
- Loyola University Chicago, B.A., Chemistry, 1978
Bar & Court Admissions
- Illinois Supreme Court
- US Court of Appeals, Federal Circuit
- US District Court, N.D. Illinois, Trial Bar
- US Patent and Trademark Office
Thomas J. Filarski
Chicago IL 60603
TEL: +1 312 577 1252
FAX: +1 312 577 1370
Thomas J. Filarski is a partner in Steptoe's Chicago office, where he is a member of the Intellectual Property and related litigation groups. Mr. Filarski is acknowledged as a leading trial lawyer particularly in patent, Hatch-Waxman, and International Trade Commission matters.
Intellectual Asset Management (IAM) magazine writes that Mr. Filarski is “particularly adept when it comes to Hatch-Waxman Act and ITC litigation” and is a “superb attorney with topnotch licensing expertise.” One client says, “he has a gift for explaining technology and technological terms in a way that makes them understandable to a judge, a jury, or any decision maker.” Another client refers to Mr. Filarski as “one of those quiet, humble people, but he is very crafty and he instills great confidence.”
He represents prominent companies in the pharmaceutical, medical device, biotech, chemical, electrochemical and mechanical industries.
He is the past president of the Licensing Executives Society (USA and Canada), a professional organization focusing on the development and transfer of technology and intellectual property. He also serves on the advisory board of the Clean Energy Trust, which connects entrepreneurs, researchers, and early stage companies with the expertise and capital needed to become sustainable businesses.
Mr. Filarski speaks and writes regularly to professional and industry groups in the United States and abroad on patent litigation and intellectual property topics. He authors the chapter "Patent Defenses" in BNA Books' Patent Litigation Strategies Handbook, now in its third edition, and he was featured in the Business Edition of Leading Lawyers Network magazine in January 2009. Mr. Filarski’s professional affiliations also include Richard Linn American Inn of Court, Chicago Bar Association, American Bar Association, American Intellectual Property Law Association, and Federal Circuit Bar Association.
Profiles and Interviews
- "The Rise In Compulsory Licensing," interview with Intellectual Asset Management magazine, September/October 2012
- "Tom Filarski: Detail-Oriented Lawyer Thrives on Teamwork," Leading Lawyers Network Magazine, January 2009
- "The Needle's Edge," interview with Mr. Filarski regarding the Filertek v. Alaris Medical Systems, Inc. case, Corporate Counsel, June 2004
- Allergan, Inc. v. Sandoz Inc. (M.D. NC, 2011) - Hatch-Waxman patent litigation involving Latisse®, a drug used to grow eyelashes.
- Allergan, Inc. v. Sandoz Inc., (D. Del. Filed Jan. 8, 2010) (SLR) (pending) - Hatch-Waxman patent litigation related to bimatoprost ophthalmic solution.
- Bone Care Int'l LLC and Genzyme Corp. v. Sandoz Inc., (D. Del. Filed July 7, 2009) - Hatch-Waxman patent litigation related to doxercalciferol.
- Genzyme Corp. v. Sandoz Inc., (D. Md. Filed July 2, 2009) - Hatch-Waxman patent litigation related to sevelamer hydrochloride and carbonate.
- Pfizer Inc., et al. v. Sandoz Inc., (D. Del. Filed April 29, 2009) - Hatch-Waxman patent litigation related to pregabalin.
- Eli Lilly and Co. v. Sandoz Inc., 08-cv-1548 (S.D. IN, filed Nov. 14, 2008); Eli Lilly and Co. v. Sandoz Inc., 08-cv-6124 (D.N.J., filed Dec. 12, 2008) - Hatch-Waxman litigation patent litigation over the antidepressant Cymbalta® and generic duloxetine.
- Nycomed GmbH and Wyeth v. Sandoz, Inc., No. I:08-02871 (N.D. Ill. May 16, 2008) - Hatch-Waxman patent litigation related to pantoprazole and antitrust claims arising under the Sherman act.
- Abbott Labs. v. Sandoz Inc., 486 F. Supp. 2d 767 (N.D. Ill. 2007) - Temporary restraining order and preliminary injunction over patents relating to a polymorph of crystalline cefdinir, an antibiotic also sold as Omnicef®.
- Filtertek Inc. v. Medex Inc. & Alaris Medical Systems, 01C50084 (N.D. Ill); Alaris Medical Systems, Inc. v. Filtertek Inc., 00 CV 2402 (S.D. Ca.) - Patent litigation on a needle-free connector for intravenous set.
- EAC v. City of Chicago, O1C6028 (N.D. Ill.). Patent litigation asserted against the city's Blue Bag recycling program.
- McKeown v. City of Chicago, 01-1200 (Fed. Cir.). Appeal by McKeown of dismissal of Illinois patent infringement action over the Wacker Drive reconstruction project.
- McKeown v. City of Chicago, OOC4840 (N.D. Ill.). Defending litigation against City of Chicago for infringement related to the Wacker Drive reconstruction project.
- UFS Corporation v. Walker, et al., 2:98CV-563JM (N.D. Ind.). Patent infringement action over membrane electrodes used in electrocoating.
- Boss v. Cabilly, No. 2009-1264 (Fed. Cir. 2009) (Interference No. 105,531) - Defending appeal taken against Genentech’s “Cabilly” patent application amended priority over UCB Pharma’s “Boss” patent application covering recombinant DNA techniques for manufacturing antibodies. The technology is now a foundation for many top-selling cancer-treatment drugs such as Avastin®, Herceptin® and Rituxan®.
- In re Certain Automated Mechanical Transmission Systems for Medium-Duty and Heavy-Duty Trucks and Components Thereof (2004), USITC Inv. No. 337-TA-503 - Successfully defended ZF Friedrichshafen AG and Arvin Meritor Corp. in a consolidated enforcement and advisory opinion proceeding related to a design-around truck transmission system. Administrative Law Judge Luckern ruled that ZF's redesign does not infringe. The two-day hearing resulted in the first known favorable ruling for a respondent in an enforcement proceeding.
- In re Certain Automated Mechanical Transmission Systems for Medium-Duty and Heavy-Duty Trucks and Components Thereof (2004), USITC Inv. No. 337-TA-503 - Represented ZF Friedrichshafen AG and Arvin Meritor Corp. in a temporary exclusion order proceeding requested by Eaton Corporation to stop importation of truck transmission systems. After a ten-day hearing involving six patents, Administrative Law Judge Luckern ruled for our clients on five patents and all but one claim of the sixth patent. Our clients attained favorable results by designing around the one remaining claim and gaining approval to import the redesigned system.
- In re Certain Electrical Connectors and Products Containing Same (1995), USITC Inv. No. 337-TA-374 - Temporary exclusion order requested by AMP to stop importation by three parties of single in-line memory module connectors (SIMM) because of patent infringement. Primarily responsible for proceedings against respondents Hon-Hai and Foxconn. After a 12-day hearing, Administrative Law Judge Luckern issued a recommendation to permanently enjoin Hon-Hai and Foxconn from importing infringing connectors. The remaining respondents settled, agreeing not to import the connectors.
For a full list of Tom's matters please click here.
- Selected as a "Life Science Star" in the inaugural issue of LMG Life Sciences, 2012
- Ranked, IAM Patent 1000, Litigation: Illinois, 2012-2013
- Highly Recommended, IAM Patent 1000, Licensing: Illinois, 2012-2013
- Listed in The Best Lawyers in America 2010-2014 for Patent Law
- Highly Recommended,IAM 250 - The World's Leading Patent & Technology Licensing Lawyers, 2011-2012
- Listed in IAM 250 - The World's Leading Patent & Technology Licensing Lawyers, Life Sciences, 2011-2012
- Ranked, IAM Patent Litigation 250 - The World's Leading Patent Litigators, 2011
- Ranked, IAM Life Sciences 250 - The World's Leading Life Sciences Patent Litigators, 2010
- Listed in Illinois Super Lawyers for Intellectual Property Litigation, 2005-2014
- Leading Intellectual Property Lawyer, Leading Lawyers Network, Law Bulletin Publishing Company, 2004, 2005, 2007, 2009, 2010
Select News & Events
- "Examining the Impact of Patent Reform on Hatch- Waxman Litigation and the Brand/Generic Wars", January 23, 2014, ACI’s 3rd Comprehensive Guide to Patent Reform
- "Impact of US PTAB Post Grant Proceedings," Global IP Convention, Hyderabad, India, January 2013\4, January 17, 2014
- Illinois Super Lawyers Recognizes Steptoe Attorneys
- Planning Committee, "Lex Mundi Intellectual Property Practice Group and Life Sciences Practice Group Joint Global Meeting", October 2, 2013
- Steptoe Receives 80 Individual Mentions in Best Lawyers 2014
- Steptoe Receives 16 Partner, Four Firm Mentions in IAM Patent 1000
- Moderator, "Parallel and Alternate Proceedings in Paragraph IV Disputes: Seeking Simultaneous or Sole Redress before the PTO, ITC and Other Alternative Forums," 7th Annual ACI Paragraph IV Disputes, May 8, 2013
- Moderator, "Practice Under the Local Patent Rules in the Northern District of Illinois," 2013 Advanced Complex Litigation Series, April 19, 2013, The Federal Circuit Bar Association
- "How Licensing Contributes to Economic Growth," Licensing Executives Society International Annual Conference - LESI, April 8, 2013
- Illinois Super Lawyers Recognizes Steptoe Partners
- IAM Magazine Interviews Tom Filarski on Compulsory Licensing
- Steptoe Receives 77 Individual Mentions in Best Lawyers 2013
- "Stirring Times for IP," Looking Ahead to 2012, LES ViewpointsFebruary 2012
Intellectual Asset Management
- "Patent Defenses," Patent Litigation Strategies Handbook, BNA Books, 2011, Cumulative Supplement
- "Patent Defenses," Patent Litigation Strategies Handbook, BNA Books, 2010, Third Edition
- "Patent Enforcement in the Courts of the United States," co-author, Butterworths Patent Litigation: Enforcing a Global Patent Portfolio, Butterworths, 1995
- "Claim Interpretation and Patent Infringement Under United States Patent Law," Mitteilungen Der Deutschen Patentänwalte, 42, February, 1993