Professional Details

Representative Matters

Computer Law

Mr. Parkhurst has prepared software production agreements and software copyright and trade secret licenses. He has represented several small special-purpose computer companies in all intellectual property and contractual matters, and represented several large and complex businesses in the acquisition and licensing of software. He recently obtained injunctive relief for an important securities dealer that prohibited ex-employees from marketing computer software designed to assist in securities trading.

Copyright Matters

Mr. Parkhurst has represented large and small publishing companies in all phases of copyright and related matters. His copyright litigation experience has involved copyright infringement, ownership, and damage issues. He is also experienced in copyright renewal issues.

Licensing and Negotiations

Mr. Parkhurst’s licensing and patent acquisition activities have included representation of an important video game and slot machine manufacturer, various software developers and users, and fluid distillation systems. Mr. Parkhurst has experience in complex license negotiations and preparation of patent, trade secret and know-how, trademark, and other licenses and agreements for a variety of clients. He has also negotiated and prepared intellectual property transfers in a number of corporate acquisitions, mergers and divestitures.

Litigation

Mr. Parkhurst has litigated over 60 patent infringement and other intellectual property lawsuits involving hand tools, computer software, electronic lighting controls, video games, electronic pianos, deep sea dredges, knee orthoses, film drying apparatus, machine tools, and screw machinery. In trademark and unfair competition areas, Mr. Parkhurst has been responsible for numerous litigations involving computer processes, laser welding of tubes, industrial lubricating oils, and fluid processes. Mr. Parkhurst has also litigated copyright infringement lawsuits involving books, electronic video games, fantasy role-playing game literature, software for financial transactions, and photo identification card production.

Patent Prosecution

Mr. Parkhurst has prosecuted hundreds of patent applications and handled all subsequent solicitation activity in various mechanical and electro-mechanical arts, including hand tools, data processing software, railroad cars, pinball games, material transfer systems, neutron generators, cryogenic particle sorting equipment, and sophisticated machine tools. He has also been responsible for all corresponding foreign patent prosecution, including travel to Europe to file and prosecute applications. He is familiar with EPC and PCT prosecution and has authored numerous infringement opinions.

Trademark Causes

Mr. Parkhurst has prepared numerous use and infringement opinions and registered several hundred trademarks. He is experienced in opposition, cancellation, and concurrent-use proceedings. He represented a leading radio-television network in trademark registration and use issues as well as a leading vacuum-bottle manufacturer in trademark revivification efforts. He has extensive experience representing a large petroleum refiner in trademark disputes with ex-dealers.

Professional Recognition

• Included on the Illinois Super Lawyers® list (2005-2006, 2008)
• Best Lawyers in America (2005-2007)
• Best of U.S. IP Lawyers (2007)

Memberships / Associations

Legal

• Member, Illinois State Bar Association
• Member, Chicago Bar Association
• Member, American Intellectual Property Law Association of Chicago
• Member, Intellectual Property Law Association
• Managing Director and Producer, Perfectly Legal Productions LLC
• Adjunct Professor, Intellectual Property Law, IIT Chicago-Kent College of Law
• Instructor, Trade Secret Law and Intensive IP Trial Advocacy
• Arbitrator, American Arbitration Association (in cases involving technical engineering issues)
• Mediator, Resolution Resources Corporation
• Director and Legal Counsel, Lifeline Pilots
• Director and Legal Counsel, Illinois Society for Prevention of Blindness
• Director and Legal Counsel, St. Sebastian Players
• Hearing Officer, Illinois Pollution Control Board

Civic / Community

• Member, Chicago Literary Club

Publications

• Trade Secrets: Cases, Materials and Strategies, (5th ed., 2008) (unpublished manuscript, on file with the Chicago-Kent Library).
• Procedures for Claim Construction After Markman, 20 Miss. C. L. Rev. 107, 107-16 (1999).
• Free Ride or Fair Use: An Analysis of American Geophysical Union v. Texaco, Inc., in 15 The Acquisitions Librarian 61-67 (Haworth Press, 1996).
• Drafting License Agreements, 80 Ill. B.J. 196, 196-97 (1992).
• The License Agreement, 79 Ill. B.J. 244, 244-46 (1991).
• Forum Highlights: Malpractice, 7 The Female Patient 18, 18-24 (1982).

Speeches and Presentations

• Presentation of Clarence Darrow’s speech entitled How to Pick a Jury, West Suburban Bar Association (May 12, 2012).
• My Father's Country, a live theatrical presentation on the case of Minoru Yasui, who fought for the civil rights of Japanese Americans during World War II, performed five times before various bar associations (2010).
• Murder on Lafayette Square, a live theatrical presentation and video discussing the 1859 murder trial of Daniel Sickles who was the first to successfully assert a temporary insanity defense, performed five times in performances sponsored by the Illinois Institute of Continuing Legal Education (2008).
• Pleading for the Future, a live theatrical presentation on Clarence Darrow's defense of Leopold and Loeb, performed over twenty times before various bar associations (1997-2009).
• Information Disclosure Statements and the Duty to Disclose, Address at the American Intellectual Property Law Association Roadshow (1995).
• License Termination, Address at the Licensing Executives Society Annual Convention (1993).
• Copyright Issues for Libraries, Address at the Charleston Conference of the American Library Association (1990).
• Serial Pricing and Copyrights: Prophecies, Strategies and Fallacies, Address at the Charleston Conference of the American Library Association (1989), in 14 Library Acquistitions: Practice & Theory 223-26 (1990).
• Adding to The Bottom Line Through Licensing, Keynote address at the Licensing Executives Society Annual Convention (1988).

Related News

• HSPRD partner Todd Parkhurst presented Clarence Darrow’s speech entitled, “How to Pick a Jury” to the West Suburban Bar Association.
• HSPRD partner Todd S. Parkhurst registered the trademark KEEP IN FLIGHT® on behalf of Chicago Sun-Times Pulitzer prize-winning photographer John H. White.
• HSPRD intellectual property partners Michael Hierl and Todd Parkhurst explain the development of Super Glue. Read more.
• The Leahy-Smith America Invents Act, a newly enacted patent law, rewards race to the Patent Office. Read more.