Steven F. Borsand

Counsel

Chicago
T +1.312.416.8172
F +1.312.416.6201

Overview

Drawing on extensive experience as both in-house and outside counsel, Steve Borsand can advise clients in a wide variety of industries on intellectual property issues, such as providing strategic and tactical counsel on intellectual property litigation. This includes developing patent litigation strategies, maximizing the persuasive impact of arguments and serving as a mock judge. Additionally, Steve has extensive experience negotiating and drafting intellectual property licenses, settlement agreements, and acquisitions.

Steve has argued patent litigation matters in numerous district and appellate court proceedings. Steve has also worked on patent litigation matters at the U.S. Patent Trial and Appeal Board and the U.S. International Trade Commission. With combined experience working in private practice, and for public and private companies, Steve is able to advise clients based on an holistic view of their legal and business landscape.

Select Experience

  • As in-house counsel, drafted briefs, presented oral arguments and prevailed on appeals to the U.S. Court of Appeals for the Federal Circuit. Also, drafted briefs and presented oral arguments to prevail at the district court level on various issues. Example district court matters include an unprecedented case dispositive motion for default judgment/sanctions, and prevailing on the 35 U.S.C. § 101 eligibility of financial related software patents (decision was affirmed on appeal). Managed patent litigation trials and appeals. While in-house, lead counsel on patent licensing matters and in various settlement conferences with judges.
  • As senior executive and in-house counsel at software company: (a) While overseeing industry wide litigation, briefed/argued appeals at Federal Circuit and numerous district court motions; (b) Oversaw development of one of the top rated (in terms of quality and quantity) financial/technology related patent portfolios; (c) Collaborated with business teams to develop commercialization and enforcement strategy; and (d) Executed on strategy and negotiated/drafted many settlements/cross-licenses that generate revenue and provide company with freedom of action.
  • As in-house counsel at a publicly traded manufacturer of telecommunications and consumer products, managed large patent litigation matters (as both plaintiff and defendant) relating to various technologies, including software and mechanical. Also managed trade secret litigation.
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Experience

  • As in-house counsel, drafted briefs, presented oral arguments and prevailed on appeals to the U.S. Court of Appeals for the Federal Circuit. Also, drafted briefs and presented oral arguments to prevail at the district court level on various issues. Example district court matters include an unprecedented case dispositive motion for default judgment/sanctions, and prevailing on the 35 U.S.C. § 101 eligibility of financial related software patents (decision was affirmed on appeal). Managed patent litigation trials and appeals. While in-house, lead counsel on patent licensing matters and in various settlement conferences with judges.
  • As senior executive and in-house counsel at software company: (a) While overseeing industry wide litigation, briefed/argued appeals at Federal Circuit and numerous district court motions; (b) Oversaw development of one of the top rated (in terms of quality and quantity) financial/technology related patent portfolios; (c) Collaborated with business teams to develop commercialization and enforcement strategy; and (d) Executed on strategy and negotiated/drafted many settlements/cross-licenses that generate revenue and provide company with freedom of action.
  • As in-house counsel at a publicly traded manufacturer of telecommunications and consumer products, managed large patent litigation matters (as both plaintiff and defendant) relating to various technologies, including software and mechanical. Also managed trade secret litigation.
  • Worked with diverse group of companies and scholars to help clarify the law relating to 35 U.S.C. § 101.
  • As outside counsel at large intellectual property law firm, worked on a wide variety of intellectual property litigation.

Recognitions and Memberships

Recognitions

  • First Chair: Top In-House Attorneys (2013)
  • Chicago's Top Rated Lawyers: I.P., Litigation (2012)

Memberships

  • PTAB Bar Association
  • American Intellectual Property Law Association
  • Association of Corporate Counsel

Prior Positions

  • Trading Technologies International, Inc.: Executive Vice President, I.P.
  • 3Com Corporation (U.S. Robotics): Director of I.P. Licensing and Litigation

Admissions

  • U.S. Supreme Court
  • U.S. Court of Appeals, Federal Circuit
  • U.S. District Court, Northern District of Illinois
  • U.S. Patent and Trademark Office, Registration No. 36,752
  • Illinois

Education

  • J.D., Harvard Law School, 1991, cum laude
  • B.S., Computer Engineering, University of Michigan, 1988, summa cum laude