Jeffrey Catalano is a Partner in the Intellectual Property Practice of Smith, Gambrell & Russell, LLP and serves as the Chicago Section Head. Mr. Catalano was previously a Partner with Freeborn & Peters, which combined with SGR in 2023.
Mr. Catalano focuses his practice on intellectual property litigation as well as IP-adjacent commercial litigation. His experience includes patent, copyright, trade secret, trademark, and unfair competition disputes before federal courts, arbitrators, the United States Patent and Trademark Office, and the International Trade Commission.
He also has in-depth experience related to patent licensing, including the licensing of standards-essential patents on fair, reasonable and non-discriminatory (FRAND) terms. His FRAND-related experience includes patent valuation, assessments of licensing terms for individual patents as well as patent portfolios, and litigation and alternative dispute resolution, including related affirmative defenses and rate setting proceedings.
Clients trust Mr. Catalano with contentious, high-stakes litigation and licensing matters that often have tens, if not hundreds of millions of dollars on the line. He has both the trial experience and the negotiation skills demanded by these cases. Although he represents clients of varying size, national origin, and litigation experience, He has made a practice of assisting domestic and foreign clients with their first significant U.S. litigations. His candor, communication style, and understanding of business realities allow him to help clients traverse the pitfalls and mitigate the burden of U.S. discovery. At trial, he is adept at presenting complicated concepts, principles, and technologies in an understandable, memorable, and relatable fashion.
While at Freeborn (now SGR), Mr. Catalano served as the Leader of the Intellectual Property Practice Group. He previously was a Shareholder at Brinks, Gilson & Lione.
Mr. Catalano received his B.A. from Miami University and his J.D. from Georgetown University Law Center.
Presenter, “Protecting Your Brand from Counterfeits and Knock-Offs,” Juvenile Products Manufacturers Association Webinar (January 28, 2020).
Panelist, “Enforcing IP in the United States,” USPTO China IP Roadshow, John Marshall Law School (October 20, 2017).
Litigant/Panelist, “China-US Intellectual Property Comparative Mock Trial,” China’s State Intellectual Property Office (SIPO) (June 15, 2017).
Speaker, “Fundamentals of U.S. Patent Litigation,” Changzhou Annual IP Seminar, Changzhou, China (June 9, 2017).
Panelist, “Demystifying Recent Decisions and Appeals at the ITC,” CenterForce IP Summit (April 2016).
Speaker, “IP Protection for Product Designs,” Association of Corporate Counsel, Chicago Chapter (August 2015).
Presenter, “The Shifting Economics of Patent Litigation,” ABA Annual Meeting, Chicago, IL (July 31, 2015).
Presenter, “Utilizing the ITC in Your Enforcement Strategy,” IP Strategy Summit Conference, Chicago, IL (May 12, 2015).
Panelist, “Protecting Trade Secrets and Defending Against Allegations of Corporate Theft,” Association of Corporate Counsel, Mountain West Chapter, Winter Retreat (March 19, 2015).
Moderator, “What is the Future of RAND/FRAND Licensing?,” ABA Annual Intellectual Property Law Conference, Arlington, VA (April 3, 2013).
Co-Author, “Sixth Circuit Affirms Finding of Validity of Hiller LLC’s Copyright,” Powerhouse Points – Quarterly Litigation Update (Fall 2020).
Co-Author, Client Alert: U.S. Supreme Court Holds that Willful Trademark Infringement is Not a Prerequisite to the Recovery of Profits (Romag Fasteners, Inc. v. Fossil Group, Inc.), Freeborn & Peters LLP, (April 24, 2020).
Co-Author, Client Alert: Supreme Court Opens the Door for the Recovery of Foreign Lost Profits for Patent Infringement Under 35 U.S.C. § 271(f)(2), Freeborn & Peters LLP, (July 3, 2018).
Co-Author, Client Alert: Federal Circuit Rules that Plaintiffs Bear Burden of Establishing Venue in Patent Infringement Litigation, Freeborn & Peters LLP, (May 17, 2018).