Alain Villeneuve

Partner

  • Alain Villeneuve
  • Phone: +1 312 499 6739
    Fax: +1 312 277 3967

    Import to Address Book

  • Duane Morris LLP
    190 South LaSalle Street, Suite 3700
    Chicago, IL 60603-3433
    USA

Alain Villeneuve practices in the area of intellectual property law, assisting clients across a wide array of industries in corporate, intellectual property and immigration matters. He routinely handles patent and trademark registration, monitoring and defense efforts. Mr. Villeneuve has represented clients before United States and global regulatory and enforcement boards, including the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (USPTO) and the World Intellectual Property Organization (WIPO).

A former nuclear engineer and a licensed U.S. Patent Attorney, Mr. Villeneuve is experienced in drafting patent applications in a number of fields, including mechanical, electrical, wireless and computer software, and has filed for international patent and trademark applications under the PCT and Madrid Systems. Notably, one of the patents Mr. Villeneuve secured was cited by the U.S. Supreme Court in its decision in Bilski v. Kappos.

Mr. Villeneuve is a 2003 cum laude graduate of the University of Illinois College of Law and a graduate of Ecole Polytechnique of Montréal. He is a native speaker of French and also fluent in Italian and English.

Areas of Practice

  • Intellectual Property Law

  • Patents

  • Trademarks

Representative Matters

  • Represented Fitness Anywhere, LLC in a patent and trademark litigation case against Amazon-based infringer WOSS Enterprises, LLC, who sold an infringing product and misused mark, “suspension training.”
  • Represented a client who owns DIGI-ME, a multimedia recruitment platform operator, in the cancellation and opposition of mark DIGI.ME for the accumulation of digital-based services on the internet.
  • Successfully defended Rosemoor Suites, LLC against Marriott Hotels LHO Chicago Hotels, Inc.’s injunction against use of name “Hotel Chicago.”

Admissions

  • Illinois
  • U.S. Patent and Trademark Office
  • U.S. District Court for the Northern District of Illinois
  • U.S. Court of Appeals for the Seventh Circuit
  • U.S. Court of Appeals for the Federal Circuit
  • England and Wales

Education

  • University of Illinois College of Law, J.D., cum laude, 2003
  • Ecole Polytechnique of Montreal, B.E., 1991

Experience

  • Duane Morris LLP
    - Partner, 2018-present

  • Vedder Price PC
    - Shareholder, 2013-2018
    - Associate, 2006-2013

  • Swanson Martin & Bell
    - Associate, 2004-2006

Professional Activities

  • American Bar Association

  • International Bar Association

  • The Law Society (UK)

  • Chicago-Kent College of Law
    - Adjunct Professor (International Intellectual Property Law)

Honors and Awards

  • Listed in Leading Lawyers, 2017

  • Listed in Illinois Super Lawyers Rising Stars, 2009-2013

Civic and Charitable Activities

  • Clowns Without Borders
    - Board of Directors

Selected Publications

  • Co-author, "Is Your Trademark Case Exceptional? Seventh Circuit Extends Octane Standard to the Lanham Act," Duane Morris Alert, November 11, 2019

  • Co-author, "2 High Court Decisions Highlight Copyright Act Complexities," Law360, March 20, 2019

  • Mentioned in "Exercise Device Co. Owes $11.9M For Infringed Patent," Law360, November 21, 2018

  • Quoted, "Judge Grants Reconsiders, Reinstates Validity of TRX Fitness Equipment Patent Claims," IP Watchdog, November 13, 2018

  • Author, "The Slants Win in Matal v. Tam: Trademark Registration Cannot Be Denied for Offensive Terms," Vedder Price, June 26, 2017

  • Co-author, "DMCA Takeaways From Zillow For Website Owners," Law360, May 2, 2017

  • Author, "B&B Hardware, Inc. v. Hargis Industries, Inc.: Trademark Litigation Might Get Simpler," Vedder Price, March 2015

  • Co-author, "The Shadow Of The Billion-Dollar Copyright Award," Law360, May 2, 2014

Selected Speaking Engagements

  • Speaker, "Intellectual Property and Digital Legal Training Day," LEGI Team, Paris, France, December 10, 2019

  • Speaker, "Registration Issues Critical to Copyright Litigation," LCA, The John Marshall Law School, Chicago, Illinois, July 26, 2018

  • Speaker, "Copyright Registration Workshop," LCA LawSmarts series, Chicago, Illinois, July 12, 2018