McCrackenFrank

Edward M. O’Toole

Of Counsel

As a litigation specialist, Edward M. O’Toole has served clients in the chemical, biotechnology, pharmaceutical, and mechanical industries as chief trial counsel in over 100 cases involving intellectual property disputes. While he has concentrated on patent infringement litigation in federal trial and appellate courts throughout the United States, he has also tried trademark and trade secret cases and handled arbitrations.

Representative Cases
Amgen v. Chugai Pharmaceutical, 927 F.2d 1200 (Fed. Cir. 1991). Reported as a stunning victory by the New York Times, this biotech patent litigation protected Amgen's position in the multi-billion dollar erythropoietin hormone market.

Amgen v. Hoechst, 126 F.Supp. 69 (D. Mass. 2001). This patent litigation, affirmed on appeal, sustained additional Amgen patents on erythropoietin, further enhancing Amgen's position in the marketplace.

Eltech Systems v. PPG, 903 F.2d 805 (Fed. Cir. 1990). This patent litigation involving chlorine production by electrolysis was one of a few cases awarding attorney fees against a patentee for bad faith assertion of infringement.

ICI v. Henkel, 545 F.Supp. 635 (D. Del. 1982). This patent infringement suit involved chelating agents used in hydrometallurgical processes to extract copper.

CPG v. Mego, 214 USPQ 206 (S. D. Ohio 1981). This trade secret case resulted in a permanent injunction involving corn syrup processing.

Tenneco v. S.C. Johnson, (N.D. Ill. 2000). In this patent infringement action, affirmed on appeal, the Court granted summary judgment of non-infringement on Zip-Loc® slider bags.

Professional Associations
American Bar Association
Intellectual Property Law Association of Chicago
Federal Circuit Bar Association
The Lawyers Club of Chicago
Richard Linn American Inn of Court

Publications & Presentations
“How to Conduct a Markman Hearing,” Practicing Law Institute Program, New York, NY, 2001–2007

“Recent Experiences with the Markman Hearing,” 41st Annual Conference on Developments in Intellectual Property Law, John Marshall Law School, February 27-28, 1997.

"Amgen and Scripps: Decided and Undecided Issues," Seventh Annual Biotechnology Law Institute. Prentice Hall Law and Business 1991, p. 113-130.