Thomas C. McDonough

Partner/Co-Chair

Tom is the co-chair of the firm’s Intellectual Property practice group and a registered patent attorney. He develops and protects complex patent, trademark and copyright portfolios maintained by domestic and global businesses. He has significant experience in negotiating and drafting software licenses, patent and trademark licenses and transfers, non-compete and confidentiality agreements, product development agreements, joint venture agreements and all related agreements that include critical intellectual property components. He also regularly performs thorough product clearance searches on behalf of clients. Tom represents clients in all aspects of intellectual property disputes, with an emphasis on patent, trademark, trade dress and copyright infringement litigation.

Tom has extensive experience in the mechanical and electromechanical fields, where he has drafted and prosecuted hundreds of patent applications with a particular focus on hydraulic drive systems, transaxles, pumps, motors and related control systems, differentials and gearing systems, vehicle engines, rail transportation equipment, automotive components and systems, snow throwers, agricultural equipment and kitchen and household products.

Clients appreciate Tom’s aptitude for understanding their businesses and goals, and for finding efficient, cost-effective strategies for developing and protecting their intellectual property. His experience in all aspects of intellectual property law enables him to provide a comprehensive understanding of the issues involved in each project.

He is a member of the firm's Diversity and Inclusion Committee and Associate Review Committee. He is an active volunteer and also serves as a member of the Board of Directors for Lawyers for the Creative Arts, an organization that provides pro bono legal services to low income artists and arts organizations.

  • Won summary judgment in a trademark and copyright case for a ball bearing manufacturer in Federal Court in Connecticut. The plaintiff’s trademark claims were found to be barred by laches and the allegedly copied materials were found not protectable under copyright. This decision was affirmed by the Second Circuit Court of Appeals.
  • Was lead counsel in a successful patent interference proceeding at the Patent Trial and Appeal Board, where the client was able to invalidate a competitor’s patent. This victory was affirmed by the Court of Appeals for the Federal Circuit.
  • Pivot Point Int’l Inc. v. Charlene Products, Inc., 372 F.3d. 913 (7th Cir. 2005) - represented the plaintiff in one of the leading decisions on the issue of conceptual separability under copyright law where our client’s copyright on a mannequin head was upheld.
  • Obtained and enforced an ex parte seizure with the United States Marshals against an individual creating and distributing counterfeit diamond certification forms.
  • Represented the plaintiff in a case involving eight patents on hydraulic pump technology; case was favorably settled.
  • Represented a major cell phone manufacturer in a patent case involving camera phones; case was favorably settled.
  • Represented a manufacturer as declaratory judgment plaintiff in a patent case involving truck technology. Case was favorably settled after we prevailed on a key claim construction issue.
  • Represented a defendant in an eight-day patent trial involving remote control technology, where the plaintiff’s patent was held not infringed.
  • Represented a major golf club manufacturer in more than 30 cases filed in federal courts around the country alleging trade dress, trademark and patent rights. Obtained various temporary restraining orders, ex parte seizure and inspection orders, preliminary and permanent injunctions, and damages in several cases. Worked with U.S. Customs Service to educate agents to prevent importation of counterfeit goods.

Bar Admissions

  • Illinois
  • U.S. Patent and Trademark Office

Court Admissions

  • U.S. Supreme Court
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the Western District of Wisconsin