Nicholas T. PetersPartner

Clients turn to Nicholas T. Peters for sophisticated patent portfolio management and the prosecution of complex patents. He helps clients manage patent assets with strategies tailored to their needs, including when and where to file patent applications, how to write them, and how to usher them through the patent offices.

In addition, Nick has extensive experience in “atypical” practices at the U.S. Patent and Trademark Office (USPTO), including reissues, reexaminations, post-grant procedures, and oral argument before the appeal board.

Nick’s clients range from individual inventors and small technology-based companies to large multinational corporations, who benefit from his background in physics, electrical engineering, and mechanical engineering. Their industries include secure access devices, wireless communication, magnetic storage media erasure, medical and imaging devices, microchip technology, mechanical water systems elements, software, and various e-commerce or Internet-based businesses.

Nick credits his previous litigation experience in helping his clients manage risk and stay on the right side of IP claims. As a result of his perspective, Nick can guide his clients to make more-informed decisions regarding any patent risk and how to mitigate that risk. This includes attacking third-party patents through various means, such as at the USPTO, where Nick regularly meets with examiners, creating relationships that can help move challenging cases through the USPTO.

Before attending law school, Nick worked with the Living State Physics Research Group at Vanderbilt University. There he helped design and run a type of electromagnetic field detector called a Superconducting Quantum Interference Device (SQuID). This work was published in Science magazine and in Review of Scientific Instruments and mentioned in major news sources. It also led to Nick being named a co-inventor on U.S. Patent Number 7,002,341.

Nick is a member of Fitch Even's Executive Committee and Business Development Committee.
 

Manages extensive global patent portfolio and application strategy for worldwide leader in barrier operator technology.

Conducts complex patent office procedures on behalf of clients, including reissue, reexamination, and post-issuance practices. Select cases:

• Google Inc. and Apple Inc. v. ContentGuard Holdings, Inc. (PTAB 2015). Lead partner for patent owner ContentGuard’s strategy and preliminary response preparation for 19 separate inter partes review petitions filed against a family of patents, resulting in all petitions being dismissed without institution of trial.
• United Microelectronics Corp., et al. v. Lone Star Silicon Innovations LLC (PTAB 2018). Institution denied as to all claims after preliminary response.
• Micron Technology, Inc. v. Limestone Memory Systems LLC (PTAB 2016). Institution denied as to all claims after preliminary response.
• Apple Inc. v. Limestone Memory Systems LLC (PTAB 2016). Institution denied as to all claims after preliminary response.

Manages worldwide Standard Essential Patent licensing campaign relating to 3G and 4G wireless communication technologies.

Creates valuable patent assets for a variety of software startup companies.

Assists prominent university in monetizing its research through development of intellectual property.

Manages U.S. patent prosecution for internationally based innovations by medical company focused on electrosurgery, vessel sealing, argon plasma coagulation, waterjet surgery, and cryosurgery.

Manages worldwide patent activity for industry leader in paint color display.

Prepares and manages intellectual property for multinational company developing new communication bus technology.

Conducts U.S. patent prosecution together with various worldwide patent professionals for non-U.S.-based clientele.

Presentations

• "Navigating the Patent Gauntlet: Considerations for New Product Launch,” Fitch Even Webinar, with David M. Kogan, February 23, 2023.
• "Tales from the IPR Counsel’s Table,” Fitch Even Webinar, with Paul B. Henkelmann, June 4, 2020.
• Adjunct Professor, University of Illinois College of Law, Patent Defenses course (2015)
• “Are Abstract Technological Advances Patentable? Go Ask Alice,” Fitch Even Webinar, with Steven G. Parmelee, July 24, 2014.
• “The Leahy-Smith America Invents Act: A First Look,” Fitch Even Webinar, October 4, 2011.
• “Matching Patent Prosecution to Your Business Goals,” Fitch Even Webinar, September 21, 2011.
• Guest Lecturer on Intellectual Property, New Venture Formation course, University of Illinois at Chicago, October 7, 2010.

• American Intellectual Property Law Association
• Chicago Intellectual Property Alliance