Charles H. Mottier

Special Counsel

Charles H. Mottier

Overview

For Charles Mottier, patents and trademarks are best seen as tools of business. Mottier’s clients receive the benefits of an attorney who can guide them and protect their intellectual property interests within the confines of individual matters, and in the broader context of their overall business concerns and goals. He is committed to providing exceptional work to best serve his clients based on an understanding of the pertinent facts and issues, and clear client communications.

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Joining Leydig as an associate in 1981, and elected as a shareholder in 1986, Mottier has extensive and deep experience in all aspects of intellectual property law, including litigation, mediation, arbitration, prosecution, and counseling. On January 1, 2024, he became Special Counsel to the firm to focus on client matters and community-building activities outside the firm, rather than firm management, which will be taken up by talented colleagues.

For his diverse client base, which includes individuals, and private and public companies, large and small, Mottier formulates comprehensive patent strategies and manages large patent portfolios. He also counsels and renders opinions on patent validity, patent infringement, technology licensing, and the protection of trade secrets and other proprietary information.

Mottier advises clients in connection with sensitive corporate transactions, including asset purchases, mergers and acquisitions, joint ventures, and employment issues. Mottier is also an effective litigator with a record of success in bench and jury trials. His ability to offer counsel and services throughout the intellectual property lifecycle provides his clients with efficiencies, continuity, and consistency.

Mottier was counsel of record in several of the first patent reexamination proceedings filed in the U.S. Patent and Trademark Office in the 1980s and now regularly counsels clients concerning post-grant review proceedings under the America Invents Act. Mottier frequently lectures and conducts workshops and seminars at universities, colleges, corporations, and trade organizations regarding patents, trademarks, copyrights, trade secrets, and unfair competition.

Mottier has participated in various aspects of the firm’s management, including service on Leydig’s board of directors, the firm’s Conflicts Committee, and acting as Chair of the Marketing, Professional Development, and Recruiting Committees. He was a member of the adjunct faculty at the University of Illinois College of Engineering (Urbana-Champaign) for 15 years, where he lectured on intellectual property issues.

Mottier received a Bachelor of Science degree in general engineering from the University of Illinois in 1978, with a focus in mechanics and fluid dynamics, and earned his law degree in 1981 from the University of Illinois College of Law. While an undergrad he was a James Scholar, and in law school he was a member of the Illinois Bar Journal. While enrolled in law school, he studied constitutional legal history at Magdalen College, Oxford University, in 1980.

An avid supporter of the arts community, with a keen interest in 20th century Japanese prints, Mottier serves on the boards of several arts, civic, and professional organizations.

Experience

Mr. Mottier has worked for a wide range of clients, from multinational corporations to start-ups, as well as individuals. His clients are in diverse technologies, including heavy equipment, medical devices, machine tools, rotary unions, sinks and portable water delivery systems, and software. Mr. Mottier provides prosecution services, prepares validity and clearance opinions, prosecutes patent applications, licenses patents and technology, and litigates on behalf of his clients.

Mr. Mottier has participated as counsel of record in dozens of litigations. Recent contested proceedings include (clients represented are underscored):

  • Elkay Manufacturing Company v. Kraus USA Inc., Civil Action 20-cv-5565 (E.D. New York) (Action for patent infringement)
  • Elleci S.P.A. v. Elkay Manufacturing Company, Civil Action 21-868-MN (D. Delaware) (Action for declaratory judgment)
  • KBK Industries, LLC v. Belco Manufacturing Company, Inc., Civil Action 5:17-cv-242 (W.D. Texas) (Action for patent infringement)
  • Kohler Co. v. Elkay Manufacturing Company, Civil Action 2:16-cv-01439-LA (E.D. Wisconsin) (Action for patent infringement and a declaratory judgment)
  • Confidential arbitration under AAA rules (2016)
  • Confidential arbitration under AAA rules, resolved through mediation (2014-2015)

Education

  • University of Illinois, J.D., 1981
  • University of Illinois, B.S. in General Engineering, 1978
    • James Scholar

Admissions

  • Illinois, 1981
  • Registered to practice before the U.S. Patent and Trademark Office

Courts

  • U.S. Supreme Court
  • Illinois Supreme Court
  • U.S. District Court for the Northern District of Illinois (Member, Trial Bar)
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Sixth Circuit
  • U.S. Court of Appeals for the Seventh Circuit
  • U.S. District Court for the District of Arizona

Honors

  • Recognized as one of six leading lawyers in the area of Patent Prosecution in the United States in connection with utilty and design patent applications by The Legal 500
    • One of 455 attorneys inducted into the inaugeral Legal 500 US Hall of Fame 2017
  • Named an IP Star by Managing Intellectual Property
  • AV® Preeminent™ Peer Review Rated (Highest Rating) – Martindale-Hubbell
  • Selected by peers as a Leading Lawyer in Intellectual Property Law – Leading Lawyers Network
  • Named in the Illinois Super Lawyers list, Intellectual Property
  • Listed among the Top Lawyers in Illinois in Intellectual Property Law – Chicago Lawyer
  • Recognized in iam 1000 – The World’s Leading Patent Practitioners
  • Recognized in iam 250 – The World’s Leading Patent & Technology Licensing Lawyers
  • Selected as a top patent prosecutor by Patent Buddy

Professional Affiliations

  • The American Bar Foundation
  • Intellectual Property Owners Association (IPO)
  • The Lawyers Club of Chicago

Community Involvement

  • East Asian Arts Group, one of five Founders and Steering Committee Member, 2021 – Present
    • The EAAG annually organizes three presentations on topics of East-Asian art, and one or two collection visits. Past speakers have included John Carpenter, Curator of Japanese Art at The Metropolitan Museum of Art, New York, and Jay Xu, Director of the Asian Art Museum, San Francisco.
  • Alliance Française de Chicago, Board Member 2018 – Present
  • The Arts Club of Chicago, Board Member 2018 – Present
    • President, 2023 – Present
    • Member on the Nominating and Governance Committee, 2019 – 2023
    • The Arts Club is a 501(c)(3) not-for-profit corporation, presents programming in the arts, and has exhibition galleries that are open to the public.
  • The Committee on Asian Art, 2017 – Present
    The Art Institute of Chicago
  • The Smart Museum, Chicago, Illinois, Board of Governors 2008 – 2020
  • Asian Arts Council, 2005 – 2019
    President of the Board of Directors, 2014 – 2016
    Board of Directors, 2010 – 2019
    Member, Acquisition Committee, 2007-2008
    The Art Institute of Chicago
  • Member of the Visiting Committee to the Department of Art History, 2009 – 2013
    The University of Chicago
  • Literature and Arts Committee, 2005 – 2012
    Chair, Art Acquisition Subcommittee, 2007 – 2012
    University Club of Chicago
  • Presidents Council
    University of Illinois

Articles, Publications & Lectures

  • In conversation with Professor Silvia Beltrametti on Rights of Publicity, School of the Art Institute of Chicago, November 28, 2023
  • Undergraduate Seminar ISE 290 on opportunities for engineers in the practice of law, University of Illinois (Champaign/Urbana), September 2023.
  • “No Wiggle Room With Patent Assignment Rights,” Chicago Daily Law Bulletin, April 4, 2018
  • “Design Patents Now More Complicated,” Chicago Daily Law Bulletin, August 3, 2017
  • “Choice of Law Clause Not Something that Should be Taken for Granted,” Chicago Daily Law Bulletin, February 15, 2017
  • “High Court Might Have a Big Say on Design Patent Infringement, Damages,” Chicago Daily Law Bulletin, April 4, 2016
  • “International Design Protection Under the Hague Agreement,” Chicago Daily Law Bulletin, December 8, 2015
  • “Rethink Joint Development Agreements,” Chicago Daily Law Bulletin, May 11, 2015, as reprinted on July 1, 2015, in the Leydig Intellectual Property Report, with updates to incorporate new Federal Circuit case law.
  • “Proving the Obvious,” Chicago Lawyer, November 2014
  • “Fee Shifting: The Pendulum Swings, ” Chicago Lawyer, July 2014
  • “Trolling for trouble,” Chicago Lawyer, April 2014
  • “Streamlining contested patent matters,” Chicago Lawyer, November 2013
  • “Bulletproof your patents,” Chicago Lawyer, July 2013
  • “Post-grant procedures: Strategic considerations,” Chicago Lawyer, March 2013
  • “Tips on subscription agreements,” Chicago Lawyer, October 2012
  • “Licensing: Contentious terms,” Chicago Lawyer, June 2012
  • “Rules we live by,” Chicago Lawyer, February 2012
  • “Patent damages: What are they worth?” Chicago Lawyer, September 2011
  • “The evolution of claim construction,” Chicago Lawyer, May 2011
  • “The changing order of battle,” Chicago Lawyer, December 2010/January 2011
  • “Provisional applications: best practices,” Chicago Lawyer, August 2010
  • “Patent marking revisited,” Chicago Lawyer, April 2010
  • “Perils of inventorship,” Chicago Lawyer, October 2009
  • “Design patents: clarified and strengthened,” Chicago Lawyer, April 2009
  • Editor of the firm’s quarterly newsletter from 2001 to 2016.

Languages

  • French

Insights

Education

  • University of Illinois, J.D., 1981
  • University of Illinois, B.S. in General Engineering, 1978
  • James Scholar

Admissions

  • Illinois, 1981
  • Registered to practice before the U.S. Patent and Trademark Office

Courts

  • U.S. Supreme Court
  • Illinois Supreme Court
  • U.S. District Court for the Northern District of Illinois (Member, Trial Bar)
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Sixth Circuit
  • U.S. Court of Appeals for the Seventh Circuit
  • U.S. District Court for the District of Arizona