Johanna Wilbert focuses her practice in the area of intellectual property litigation, providing counsel in patent, trade secret, trademark, and false advertising litigation and appeals. The clients she serves run the gamut, from inventors and startups to national franchisors, medical device manufacturers, apparel manufacturers, and heavy equipment companies.
She is uniquely experienced in representing clients in complex cases involving multiple types of intellectual property and counseling clients on strategies for protecting and enforcing IP rights in a synergistic matter within a portfolio. For example, in the software space, Johanna helps clients address patent, copyright, and trade secrets associated with software. She also regularly advises clients about the intersection of product design, utility patents, and advertising, having litigated cases involving complex issues of trade dress, design patents, and utility patents. As a business advisor and a litigator, Johanna sees these issues from both sides, understands the overlap, and advises on an appropriate intellectual property strategy.
When rights need to be protected, Johanna and her team are prepared to act quickly and aggressively, having successfully obtained numerous temporary restraining orders and preliminary injunctions involving issues ranging from patent infringement, trademark infringement, trade secret misappropriation, and false advertising, including recent decisions in which the district court acted on an expedited basis to issue orders pulling advertising from the airwaves.
Her experience encompasses counseling clients and their internal teams regarding their use of social media, including social media account ownership, brand management, trademark protection, product liability, and customer service as it relates to social media.
Her recent experience includes:
- Advised medical device company regarding various methods to protect intellectual property, including assistance with Inventorship dispute and scope of patent rights.
- Protected a falsely accused infringer by filing a declaratory judgment action and obtaining summary judgment that invalidated all patent claims at issue, for a complete victory for the accused infringer.
- Successfully represented a large manufacturer of mining equipment in its trade secret theft and patent infringement case against a competitor who had stolen design drawings. The case settled shortly before trial in June 2010, with a $25 million payment to our client.
- Representing companies in trademark matters before the Trademark Trial and Appeals Board, including oppositions and cancellations.
- Representing an inventor in an appeal from the Board of Patent Appeals and Interferences.
- Pursuit of misrepresentation and fraud claims in commercial disputes.
- Pursuit and defense of a variety of patent infringement lawsuits regarding various products.
Corcamore, LLC v. SFM, LLC, WL-92060308 (Federal Court of Appeals, October 27, 2020) (Affirming TTAB decision in favor client, SFM, LLC and clarifying that Lexmark's analytical framework applies to TTAB analysis of statutory standing, clarifying that the proper legal analysis is whether a statutory cause of action has been stated).
A. Zahner Co. v. Hendrick Metal Products, LLC, 328 F.Supp.3d 870 (N.D. Ill 2018) (Defendant's side patent infringement lawsuit involved software directed to methods of manipulating metal for architectural features in which we successfully invalidated key patent claims based on 101 arguments).
ProMark Brands Inc. and H.J. Heinz Company v. GFA Brands, Inc., Oppositions No. 91194974 and 91196358 (March 27, 2015) [precedential] (TTAB trial resulting in dismissal of opposition in favor of our client, GFA, and its application to register the SMART BALANCE. After trial and oral argument the Board concluded that although the goods were closely related, confusion between the SMART ONES and SMART BALANCE marks was not likely).
Precision Dynamics Corp. v. Typenex Medical, LLC, 2014 WL 4851542 (E.D. Wis. Aug. 25, 2014) (plaintiff's side patent infringement and trademark infringement lawsuit in which we successfully obtained a preliminary injunction preventing defendants from infringing plaintiff's patent related to patient identification bands).
Paul Davis Restoration, Inc. v. Everett, 2014 WL 7140038 (E.D. Wis. Dec. 12, 2014) (successfully obtained a preliminary injunction preventing defendants from airing a radio advertisement based on allegations of false advertising and trademark infringement).
Starsurgical, Inc. v. Aperta, LLC, 832 F. Supp. 2d 1000 (E.D. Wis. 2011) (obtained a preliminary injunction preventing defendants from using plaintiff's WITTMANN PATCH trademark in connection with surgical patch).
Advanced Fiber Technologies Trust v. J&L Fiber Services, Inc., 2010 WL 3703048 (N.D.N.Y. Sept. 13, 2010) (successfully prevented summary judgment against our client J&L Fiber Services, and at the same time persuaded the court to adopt favorable claim constructions and to dismiss certain claims as a result of the claim constructions).
Standard Process v. Banks, 554 F.Supp.2d 866. (E.D. Wis.) (successful defense of trademark case involving trademark use on the internet, sponsored links, and metatags).
Standard Process v. Total Health, 559 F.Supp.2d 932. (E.D. Wis.) (trademark and tortious interference case involving internet sales of dietary supplements).
- Intellectual Property Strategic Counseling
- Intellectual Property Litigation
- Patent Litigation
- Trade Secrets and Unfair Competition
- Inter Partes Review Proceedings
- Litigation & Dispute Resolution
- Trademark Litigation
- False Advertising & Lanham Act
- Financial Institutions Litigation
- Trade Secrets
- Trademarks & Copyrights
- Professional Liability
- Design Patents
Education and Honors
- Northwestern University, Kellogg School of Management, Certificate, Quarles & Brady Leadership Program (2016)
- University of Wisconsin Law School (J.D., cum laude, 2006)
- University of Wisconsin Moot Court (Treasurer)
- University of Wisconsin (B.S., 2002)
- U.S. Court of Appeals, 7th Circuit, 2015
- U.S. Patent and Trademark Office, 2007
- U.S. District Court, Western District of Wisconsin, 2007
- U.S. Court of Appeals, Federal Circuit, 2007
- U.S. District Court, Eastern District of Wisconsin, 2006
- Selected for inclusion in Wisconsin Super Lawyers®-Rising Stars Edition 2013; 2015-2016, 2018, 2019 (Intellectual Property Litigation)
- Listed in The Best Lawyers in America® (2021, Litigation - Intellectual Property, Litigation - Patent)