Significant Legal Contributions

Edward D. Manzo

Mr. Manzo has been a pioneer in the development of patent law throughout his career. In 1982, he worked on the first district court appeal to the Federal Circuit, Magnavox v. Mattel, Inc., No. 83-500 (Fed. Cir. 1982) (appeal dismissed), where the issue was the scope of means-plus-function claims. One of his next cases, In re Application of Hardee, 223 U.S.P.Q. 1122 (Comm’r Pat. 1984), contributed to the law of joint inventorship, and the ruling is cited in the Manual of Patent Examining Procedure (“MPEP”) at §§ 201.03 and 2137.01. He has been successful in inequitable conduct cases such as Hycor v. Schlueter, 740 F.2d 1529 (Fed. Cir. 1984) (cited in the MPEP § 2004); and Hemstreet v. Burroughs Corp., 861 F.2d 728 (Fed. Cir. 1988). One of his cases established the “settlement exception” to the Lear doctrine, Hemstreet v. Spiegel, Inc., 851 F.2d 348 (Fed. Cir. 1988). In 1990, in a very difficult area of the law, he won a favorable decision concerning interference estoppel and obviousness over lost count rejections, Ex parte Rohrer, 20 U.S.P.Q.2d 1460 (Bd. Pat. App. & Interf. 1990). He contributed substantially to the law of laches and estoppel in Hemstreet v. Computer Entry Systems Corp., 972 F.2d 1290 (Fed. Cir. 1992); Hemstreet v. BancTec, No. 91-1089, 1992 U.S. App. LEXIS 19150 (Fed. Cir. 1992); and Hemstreet v. Lundy Electronics & Systems, No. 90-1486 (Fed. Cir. 1992). More recently, he has helped to develop the law as principal counsel for amicus curiae, The Intellectual Property Law Association of Chicago (“IPLAC”), in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (patent claim construction) and Illinois Tool Works, Inc. v. Independent Ink, Inc., 547 U.S. 28 (2006) (patent-antitrust tying). Further, he was Of Counsel on IPLAC’s amicus brief in KSR Int’l Co. v. Teleflex, Inc., 2006 U.S. S. Ct. Briefs LEXIS 1067 (2006). Mr. Manzo served actively on the Patents Subcommittee of the Pattern Jury Instruction Committee for the Seventh Circuit, which prepared the instructions approved in 2008 for use througout Illinois, Indiana, and Wisconsin. He now serves on a committee working on local patent rules. His recent litigation efforts have included obtaining a preliminary injunction in Miyano Machinery USA, Inc. v. MiyanoHitex Machinery, Inc., 576 F. Supp. 2d 868 (N.D. Ill. 2008) (trademarks/family name).


Back to Profile	Significant Legal Contributions Edward D. Manzo Mr. Manzo has been a pioneer in the development of patent law throughout his career. In 1982, he worked on the first district court appeal to the Federal Circuit, Magnavox v. Mattel, Inc., No. 83-500 (Fed. Cir. 1982) (appeal dismissed), where the issue was the scope of means-plus-function claims. One of his next cases, In re Application of Hardee, 223 U.S.P.Q. 1122 (Comm’r Pat. 1984), contributed to the law of joint inventorship, and the ruling is cited in the Manual of Patent Examining Procedure (“MPEP”) at §§ 201.03 and 2137.01. He has been successful in inequitable conduct cases such as Hycor v. Schlueter, 740 F.2d 1529 (Fed. Cir. 1984) (cited in the MPEP § 2004); and Hemstreet v. Burroughs Corp., 861 F.2d 728 (Fed. Cir. 1988). One of his cases established the “settlement exception” to the Lear doctrine, Hemstreet v. Spiegel, Inc., 851 F.2d 348 (Fed. Cir. 1988). In 1990, in a very difficult area of the law, he won a favorable decision concerning interference estoppel and obviousness over lost count rejections, Ex parte Rohrer, 20 U.S.P.Q.2d 1460 (Bd. Pat. App. & Interf. 1990). He contributed substantially to the law of laches and estoppel in Hemstreet v. Computer Entry Systems Corp., 972 F.2d 1290 (Fed. Cir. 1992); Hemstreet v. BancTec, No. 91-1089, 1992 U.S. App. LEXIS 19150 (Fed. Cir. 1992); and Hemstreet v. Lundy Electronics & Systems, No. 90-1486 (Fed. Cir. 1992). More recently, he has helped to develop the law as principal counsel for amicus curiae, The Intellectual Property Law Association of Chicago (“IPLAC”), in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc) (patent claim construction) and Illinois Tool Works, Inc. v. Independent Ink, Inc., 547 U.S. 28 (2006) (patent-antitrust tying). Further, he was Of Counsel on IPLAC’s amicus brief in KSR Int’l Co. v. Teleflex, Inc., 2006 U.S. S. Ct. Briefs LEXIS 1067 (2006). Mr. Manzo served actively on the Patents Subcommittee of the Pattern Jury Instruction Committee for the Seventh Circuit, which prepared the instructions approved in 2008 for use througout Illinois, Indiana, and Wisconsin. He now serves on a committee working on local patent rules. His recent litigation efforts have included obtaining a preliminary injunction in Miyano Machinery USA, Inc. v. MiyanoHitex Machinery, Inc., 576 F. Supp. 2d 868 (N.D. Ill. 2008) (trademarks/family name).