Roger Masson is an engineer and lawyer who helps individuals and large and small companies maintain their competitive advantages by protecting their innovations. He handles patent, trade secret and trademark matters, including arbitration, litigation, opinion and prosecution work.
Mr. Masson has written and successfully prosecuted patent applications in the United States, China, Europe and Japan relating to: food and chemical processing; food products; night vision; ophthalmic solutions; and restaurant equipment. His litigation experience includes patent litigation and arbitration, trade secret litigation, and trademark litigation concerning contact lenses, golf clubs, insurance, night vision equipment, specialty chemicals and telephony. Mr. Masson's opinion work includes freedom to practice, clearance, invalidity and design-around work involving artificial intelligence, fine chemicals, food products, nutraceuticals, industrial equipment and restaurant equipment.
Mr. Masson also has a home brewing hobby and combines his related insights with his legal skills to help craft and home brewers with various legal matters. For example, he has: (1) successfully responded to a trademark holder's cease-and-desist letter to a home brew store; (2) advised a brewer about recipe licensing; and (3) advised home brewing clubs about various issues, including insurance coverage, maintaining nonprofit status and incorporation.
Prior to joining Hinshaw & Culbertson LLP, Mr. Masson was an associate at an intellectual property boutique firm in Chicago.
Before beginning his legal career, Mr. Masson was a licensed professional engineer and held environmental and chemical engineering positions at two engineering firms. In those roles, he managed cleanup at a state Superfund site, designed several cleanup systems, and obtained approval for production of two new chemicals from the U.S. Environmental Protection Agency. During his undergraduate studies, Mr. Masson gained technical engineering experience through two co-op programs with one of the largest manufacturers in the United States and one of the world's largest petroleum companies.
A selection of Mr. Masson's representative matters includes:
- Successfully drafted and prosecuted patents for a user interface for restaurant equipment for a Fortune 150 company in the United States, Australia, Canada and Japan.
- Obtained a finding of breach of patent license and patent validity relating to optics in an International Chamber of Commerce arbitration between an American licensor and a French defense contractor. A decision on damages is pending.
- Discovered massive spoliation of evidence in trade secrets litigation relating to fine chemicals, which ultimately led to defendant pleading guilty to four criminal counts of unauthorized possession of stolen trade secrets, a permanent injunction and a multimillion dollar judgment.
- Successfully defended a small store against a trademark owner's assertions of trademark infringement in two cease-and-desist letters.
Successfully prosecuted patents for a natural food product for a Fortune 100 company. Highlights included defeating a post-grant opposition proceeding before the European Patent Office and overcoming a rejection by the Venezuelan patent office by writing arguments partially in Spanish referencing the specific wording of substantive Venezuelan patent law.
Successfully prosecuted patents in the U.S. Patent and Trademark Office and the European Patent Office (EPO) for a solo inventor obtaining broad coverage in the material sciences. In the EPO, successfully overcame a unity of invention rejection allowing broad coverage to be achieved in a single patent.
- "Advanced Intellectual Property Law," Patentable Subject Matter In and Out of the U.S., webcast, National Business Institute, December 2014.
- "Advanced Intellectual Property Law," The Current State and Developments in Divided and Indirect Infringement Law, webcast, National Business Institute, December 2014.
- "Advanced Intellectual Property Law," Roundup of 2014 Supreme Court Patent Cases Regarding Indefiniteness, Claim Construction, Award of Attorney Fees, Licensee Challenges and Their Fallout, webcast, National Business Institute, December 2014.
- U.S. Supreme Court Substantially Devalues Design Patent Damages on Multicomponent Products: What Design Patent Holders Need to KnowDecember 21, 2016Intellectual Property Update
- September 2, 2015Intellectual Property Update
- June 24, 2014Intellectual Property Update
- May 9, 2014Intellectual Property Update
- April 30, 2014Intellectual Property Update
J.D., DePaul University College of Law, 2004
- Intellectual Property Law Society, Webmaster and Digest Editor, 2002–2003
B.S., Chemical Engineering, Northwestern University, 1991
- U.S. District Court for the Northern District of Illinois
- U.S. District Court for the Western District of Michigan
- U.S. Patent and Trademark Office