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Macy Skulman represents clients in intellectual property litigation, prosecution, and transactional matters, including patent, trade secret, trademark, copyright, and breach of contract. She litigates patent, trademark, copyright, and trade secret litigation in federal courts throughout the country, including presenting oral arguments at summary judgment, claim construction, preliminary injunction, and temporary restraining order hearings. She has drafted numerous motions, claim construction briefs, invalidity contentions, and infringement contentions; developed arguments and worked with experts on invalidity, infringement, and damages issues; taken and defended fact and expert depositions; and performed direct and cross examinations in district court and at the International Trade Commission. Macy also has experience handling matters before the United States Patent and Trademark Office (USPTO). She has experience in AIA post-grant challenges to patent validity, including drafting inter partes review (IPR) petitions and patent owner responses to IPRs. She also drafts and prosecutes patent applications and prosecutes trademark applications at the USPTO. In addition, Macy has experience handling trademark matters before the Trademark Trial and Appeal Board.

Macy’s experience also includes drafting and negotiating contracts, settlement agreements, and licensing agreements. She also performs freedom-to-operate, intellectual property clearance, and patentability analyses. 

She has a background in electrical engineering with a focus on signal and image processing. In the patent field, Macy’s technological experience is diverse, including technologies such as advanced automotive safety systems based on image processing, power supply controller chips, networking and communication systems, banking products and services, computer architecture, software and information security systems, bag-in-box and pouch packaging, compact tool carriers and power tools, elevated water tanks, women’s apparel, and electrical components in fitness machines.

Concentrations

  • Patent, copyright, trademark, and trade secret litigation
  • Patent and trademark prosecution
  • Inter partes review and other post grant proceedings at the U.S. Patent and Trademark Office
  • Section 337 investigations at the U.S. International Trade Commission
  • Patent, trademark and copyright freedom-to-operate and clearance analyses
  • Intellectual property contract drafting and review
  • Intellectual property transactions, including licensing agreements and other IP due diligence matters
  • Client counseling in all areas of intellectual property

Capabilities

Experience

  • As lead counsel in an inter partes review, obtained a final decision finding all challenged claims were unpatentable.
  • Obtained a preliminary injunction against a competitor in a trade secret and copyright matter in the U.S. District Court for the Northern District of Illinois.
  • Awarded statutory damages and a finding of trademark and counterfeiting infringement, in a summary judgment ruling that disposed of all remaining case issues favorably for the client.
  • Won on a motion to remand before the Federal Circuit, with the Federal Circuit also instructing the USPTO to dismiss certain patent claims from the underlying post grant proceeding.°
  • Won a preliminary injunction against a competitor in a patent infringement matter in the U.S. District Court for the Northern District of Illinois.°
  • Won a finding of “no violation” by the defendant in a Section 337 ITC investigation where a competitor had asserted four patents.°
  • Obtained a preliminary injunction in a software copyright matter in the U.S. District Court for the Western District of Missouri.°

° The above representations were handled by Ms. Skulman prior to her joining Greenberg Traurig, LLP.

Recognition & Leadership

  • Listed, Super Lawyers magazine, Illinois Super Lawyers, “Rising Star,” 2016-2022
  • Recipient, Award for Excellence in Pro Bono Service, United States District Court for the Northern District of Illinois and the Chicago Chapter of the Federal Bar Association, 2018
  • Member, Order of the Engineer
  • Member, Society of Women Engineers
  • Member, Phi Alpha Delta Law Fraternity

Credentials

Education
  • J.D., cum laude, George Mason University School of Law, 2013
    • Specialty Certificate, Patent Law Track
    • Winner, Giles Sutherland Rich Moot Court Western Regionals “Best Advocate”
  • B.E., Electrical Engineering, Vanderbilt University
    • Focus, Signal and Image Processing
Admissions
  • Illinois
  • U.S. Patent and Trademark Office
  • 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 Central District of Illinois
  • U.S. District Court for the Western District of Michigan