Steven J. Wietrzny, Esq.
direct: 773.570.4775 main: 773.570.3330 fax: 773.570.3328
Steve Wietrzny (/vē·etzh´·nì/) has over twenty years of experience in the field of intellectual property, including copyright, patent and trademark rights procurement and related IP asset management, enforcement and defense. He focuses his practice on the preparation and prosecution of patent applications in the mechanical and electro-mechanical arts to secure patent rights for clients domestically and abroad.
Mr. Wietrzny counsels clients in all aspects of patent portfolio management and developing and exploiting intellectual property and related strategic business considerations, including: evaluation of right to practice, invalidity and patentability; preparation of product clearance and related opinions; and performing due diligence evaluations on the strength and potential design-around paths for new inventions, all with an eye on protecting clients’ current and future business assets and developments. Clients appreciate Mr. Wietrzny’s amicable style, close attention to each matter and common-sense, efficient approach to prosecution and case management.
Mr. Wietrzny has prepared and prosecuted hundreds of patent applications covering inventions in an array of technologies and industries. Representative patent technologies include: Automotive Sub-Systems; Batteries; Commercial Air Handling; Engines; Emission Control; Gas Turbine Fuel Control and Monitoring; Hardware and Tools; Heavy Equipment and Off-road Machines; Hydraulics; Injection Molded Products; Jet and Rocket Fuel Delivery Control; Manufacturing Systems and Methods; Mechanical Couplings and Conveyors; Medical and Dental Devices; Packaging; Plumbing Fittings and Fixtures; Pulp Screening and Refining; Pumps and Compressors; Refrigeration and Cooling; Speech Recognition; Surface Ionization Treatment; Tamper-evident Sealing; Transmissions; and Ultrasound and X-ray Imaging.
Mr. Wietrzny also has extensive experience in preparing and prosecuting design applications along with counseling clients on design and trade dress portfolios and providing opinions on patentability and freedom to operate within the industrial design context. Representative design industries include: Consumer Appliances; Consumer and Office Furniture; Footwear; Heavy Equipment and Off-road Machines; Medical Devices; Outdoor Gear and Apparel; Plumbing Fittings and Fixtures; and Tools and Manufacturing Equipment.
Additionally, Mr. Wietrzny has years of experience preparing, filing and prosecuting trademark applications, and advising clients on the registration and use of trademarks, service marks and tradenames as well as conducting investigations on the availability of state and federal marks. Mr. Wietrzny understands the intersection of configurational trademark, trade dress and design patent law and has counseled clients in developing cross-IP strategies to better build brand recognition and secure long-term IP rights in commercial products.
Prior to joining Klintworth & Rozenblat IP, Mr. Wietrzny was a partner at the law firms of Lorenz & Kopf (formerly Ingrassia, Fisher & Lorenz) and Quarles & Brady.
REPRESENTATIVE PATENT AND TRADEMARK PROSECUTION EXPERIENCE
Mr. Wietrzny has represented a wide variety of clients, including Fortune 100 and 500 companies, universities, small to midsize businesses and individual inventors. Selected representations include:
■ Representing a company at the cutting-edge of fuel control for ignition and sustained combustion of jet and rocket engines, including fuel control valves used in NASA’s scramjet powered X-43A “Hyper-X” vehicle to set an air speed record for air-breathing vehicles.
■ Representing a venerable name in the agriculture industry to secure utility and design patent rights in various work vehicle and implement platforms, engines and sub-systems, including state-of-the-art transmission assemblies, emission control systems, crop and forage harvesting machines, as well as managing the prosecution of the associated portfolio of patents. This representation also includes counseling on and patenting innovative aspects of various construction and forestry machine platforms and implements as well as associated machine control and fleet management technology.
■ Representing a global retailer of outdoor and sporting gear to secure utility and design patent rights, including protecting realistic wing-flap water fowling decoy technology.
■ Representing a well-known office furniture innovator to secure design rights in various business furniture and office accessories, including pioneering collaborative workspaces and workstations.
■ Representing a domestic producer of commercial and residential refrigeration and cooling appliances, including high-end beverage centers, clear ice makers and undercabinet cooling drawers.
■ Representing a leading manufacturer of surface ionization equipment, including corona and plasma treaters and stations for the surface treatment of web film and three-dimensional objects. This representation also includes securing domestic and foreign patent rights for the company’s induction sealing equipment, including advanced high-speed tamper-evident cap sealers.
■ Representing a global market leader in the plumbing industry to protect the bold look of a wide range of fittings and fixtures, including a state-of-the-art soaking tub with innovative hydrotherapy and chromotherapy features and an articulating kitchen faucet winning IDEA® acclaim.
■ Representing a paper pulp processing manufacturer to secure patent rights and defend its market position in the pulp screening space.
■ Preparing, filing and prosecuting over 1,000 priority design applications within a broad spectrum of industries, including graphical user interfaces and numerous other articles of manufacture.
■ Securing federal and state registrations for numerous corporate names and product brandings, including for clients in the manufacturing, aerospace, utility and financial industries.
■ Successfully advising, defending and registering the service mark of a financial institution against a priority claim of a competitor financial institution.
■ Investigating, counseling and opining on a multi-platform trade dress update of off-road vehicles for a global heavy equipment manufacturer.
REPRESENTATIVE LITIGATION EXPERIENCE
Mr. Wietrzny has experience enforcing clients’ patent rights and defending against claims of patent infringement, including experience with cease-and-desist demands, claim construction, Markman hearings, and trial and appellate pleadings, including:
■ Successfully defending a multi-national medical supply company against a claim of patent infringement for a patented medical fabric by achieving a favorable claim construction ruling in the Eastern District of Wisconsin.
■ Successfully obtaining summary judgment of non-infringement in the Northern District of New York for a paper-making equipment manufacturer against a claim of patent infringement.
REPRESENTATIVE PUBLICATIONS AND PRESENTATIONS
■ Design Law Update, in-house corporate educational seminar, January 2019
■ Like a Wrecking Ball: The Troubling Trend of Patent Decisions Continues – What patent owners can do about recent Supreme Court decisions not in their favor, Inside Counsel, August 2014
■ Patent Law Update – Supreme Court Patent Docket, in-house corporate educational seminar, July 2014
■ The Federal Circuit Draws the “Boundary Line” in the Sand for Design Patents, Quarles & Brady, March 2013
■ By Design, in-house corporate educational seminar, March 2013
■ The America Invents Act: The Fundamentals of the New U.S. Patent System and What It Means to the American Inventor, Arizona Technology Council, October 2011
■ Federal Circuit Restricts Inequitable Conduct Doctrine, Quarles & Brady, May 2011
■ University of Wisconsin Law School, J.D., 1998, Articles Editor, Wisconsin International Law Journal
■ University of Wisconsin-Milwaukee, B.S., Mechanical Engineering, 1994, Tau Beta Pi
PRIOR LAW FIRMS
■ Lorenz & Kopf (formerly Ingrassia, Fisher & Lorenz)
■ Quarles & Brady
BAR & COURT ADMISSIONS
■ Admitted to practice law before the Supreme Courts of Arizona and Wisconsin
■ Admitted to practice before the U.S. District Court for the Western District of Wisconsin
■ Registered Patent Attorney before the U.S. Patent and Trademark Office