
An experienced attorney in intellectual property protection and enforcement, and with a background in electrical engineering, Matthew “Chip” De Preter has helped numerous companies and individuals protect, build value and profit from their creative products through patents, trademarks and copyrights. His clients include domestic and international companies involved in matters of patent infringement, trademark infringement, anti-trust violations, the misappropriation of trade secrets and unfair competition.
Chip has spent nearly two decades in the courtroom and has tried multiple cases to jury verdicts. As a member of the Patent Bar, he specializes in patent and other intellectual property disputes and routinely helps his clients bring cases to protect their precious intellectual property. In the extremely competitive online retail space, counterfeiting is an ever-present problem, and it is all too easy for overaggressive rights owners to try to take advantage of online sellers with questionable claims of IP infringement. Chip is well versed in thoroughly analyzing and vetting potential plaintiff’s-side IP claims to ensure his clients properly exercise their rights against infringers to reliably achieve litigation success. So too, he has a wealth of experience assisting defendants against unfounded claims of infringement and ensuring that his clients receive proper protection of the law. Chip has achieved great success for clients engaged in traditional litigation as well as clients involved in Schedule A counterfeiting cases.
Outside of litigation, as co-chair of the Aronberg Goldgehn Intellectual Property practice group, Chip leads his team in the development of a robust patent and trademark prosecution practice, ensuring that his and his partners’ clients execute studied and targeted IP strategies to identify and secure valuable IP assets.
In practicing before the U.S. Patent and Trademark office, Chip has assisted individual and corporate clients in seeking and procuring patent protection in a variety of different technological areas, including industrial machinery, medical equipment, vacuum pumps, vending machines, robotics, semi-conductor chips, optics and tools. He also has considerable experience with post-grant patent review processes. His trademark practice includes assisting clients in identifying prospective trade names, preparing trademark applications, and prosecuting and procuring trademark protection.
REPRESENTATIVE MATTERS
Recent Representative Litigation Matters Include:
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Grunt Style v. TWD, No. 18-CV-7695--Represented Grunt Style, a veteran focused company that is a leader in patriotic apparel, in asserting its trademark rights in THIS WE’LL DEFEND. After successfully canceling TWD’s trademark registration, secured victory before a jury and a judgment of nearly $1M in favor Grunt Style for TWD’s trademark infringement and unfair competition.
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Homy Casa v. Jili Creation, No. 2:24-CV-00763, 2024 WL 4677664 (W.D. Pa. Nov. 5, 2024)– Successfully represented defendant and online houseware seller by securing dismissal with prejudice at the pleading stage when client was accused of design patent infringement, one of the few cases to achieve such a result.
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Weisner v. Google LLC, 51 F.4th 1073 (Fed. Cir. 2022). - After being retained for purposes of proceeding on appeal, successfully revived two of Plaintiff’s patents previously invalidated by the district court under §101, allowing the plaintiff and independent inventor to continue its case against the tech giant.
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Shen Zhen Wo Nuo De Zhi Neng Ji Shu You Xian Gong Si v. The Partnerships 22-cv-01203 – Successfully represented Plaintiff and trademark owner in removal of hundreds of counterfeit sellers of Plaintiff’s unique flying drone toy and achieving favorable recoveries of infringing damages.
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Chazak v. Mitzvah Kinder: TTAB Opposition No. 91272685; Successfully represented a well-known toy store owner in Brooklyn, New York in challenging the attempted registration of the term MENTCHEES, as being a well known and generic term for toy figurines.
Further Representative Matters:
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Orthoflex, Inc. et al. v. ThermoTek, Inc. (N.D. Texas), Case No. 11-CV-00870-D – Successfully overturned a $9.5 million jury award, obtained a ruling dismissing all claims against the client, Orthoflex, and successfully defended that dismissal on appeal before the U.S. Court of Appeals for the Fifth Circuit in a case where Chip helped define the legal scope of patent and copyright preemption law.
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Nike, Inc. v. Hummel Sport USA et al. (D. Massachusetts), Case No. 1:16-cv-11559 - Represented Hummel in defending against multiple claims of patent infringement by Nike, and ultimately secured an agreeable settlement.
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United States and The Administrators of the Tulane Educational Fund v. Cytogel Pharma, LLC (E.D. LA) Case No. 16-cv-13987 - Successfully represented Tulane in a declaratory judgment action that addresses counterclaims of patent infringement, misappropriation and breach of contract relating to novel peptide compounds. After dismissing several counterclaims, and achieving favorable summary judgment rulings dismissing additional counterclaims, advanced the case through additional successful pretrial motions including striking Cytogel's experts and placing the parties in position for settlement days prior to trial.
SPEECHES AND PUBLICATIONS
Chip is the editor of, and regular contributor to, Aronberg Goldgehn’s Intellectual Property Law Alert, including:
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"USPTO Will Increase Patent Fees in Two Weeks," Sept. 15, 2020.
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"Disgorgement of Profits for Trademark Infringement Does Not Require Willfulness," April 23, 2020.
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"U.S. Patent and Trademark Office Extends Some Deadlines," April 1, 2020.
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"It's Business as Usual *Mostly* at the USPTO," March 25, 2020.
His recent presentations include:
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"SCOTUS IP Year in Review 2019-2020,” a Lawline webcast, Sept. 21, 2020.
PROFESSIONAL BACKGROUND
Chip joined Aronberg Goldgehn as a Member in November 2019, and in 2022 became co-chair of the firm's Intellectual Property practice group. Previously he was a member at Olson & Cepuritis, Ltd., where he had practiced law since 2014.
For the first eight years of his legal career, Chip practiced with Rockey and Lyons (formerly Rockey, Depke & Lyons, LLC), where he initially focused on patent prosecution work for Sony. Eventually transitioning away from that into almost full-time patent litigation, he handled large litigations with more than $100 million in damages at issue, as well as smaller cases and others in between.
In 2020, Chip was named a Leading Lawyer in Intellectual Property Law and Patent Law by Illinois Leading Lawyers.
Prior to receiving his J.D. from DePaul University College of Law, Chip obtained a B.S. in Electrical and Electronic Engineering from Marquette University in Milwaukee.
COMMUNITY INVOLVEMENT
Chip is an active member of his local parish, Queen of All Saints in Sauganash, where he serves as on the Board of the QAS Men’s Club and where his youngest son attends school. He is also involved with Loyola Academy’s rowing program where his eldest son excels on the crew team.
RELATED NEWS
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Aronberg Goldgehn Secures TTAB Victory, Freeing Use of "Mentchees" in Jewish Toy Market
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Aronberg Goldgehn Secures Additional Victory for Grunt Style in Long-Running Trademark Dispute
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Chip De Preter Secures Dismissal in Design Patent Infringement Case
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Aronberg Goldgehn Elevates Chip M. De Preter and Ben E. Haskin to Equity Membership
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Jury Awards $740k to Apparel Company Grunt Style in Trademark Infringement Action
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Supreme Court Tackling Intellectual Property "Fair Use" In Multiple Contexts
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Matthew "Chip" De Preter Achieves Victory for Grunt Style, LLC in Trademark Infringement Case
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Intellectual Property Law Alert - Small Justice for Those Scammed by Fake Trademark Solicitations
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35 Aronberg Goldgehn Attorneys Honored as Leading and Emerging Lawyers in 2021 Lists
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Chip De Preter Co-Presenting "SCOTUS IP Year in Review 2019-2020"
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Intellectual Property Law Alert - USPTO Will Increase Patent Fees in Two Weeks
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Twenty-Nine Aronberg Goldgehn Attorneys Named Illinois Leading Lawyers
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Business Law Alert - Guidance Brings Clarification On PPP Loan Certification Requirements
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Intellectual Property Law Alert - U.S. Patent and Trademark Office Extends Some Deadlines
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Intellectual Property Law Alert - It's Business as Usual *Mostly* at the USPTO
DePaul University College of Law, J.D., 2006
Marquette University, B.S., Electrical and Electronic Engineering, 2002
BAR AND COURT ADMISSIONS
- Illinois, 2007
- U.S. District Court for Northern District of Illinois, including Trial Bar
- U.S. Patent and Trademark Office
- U.S. Court of Appeals for the Fifth Circuit
MEMBERSHIPS
- American Bar Association
- Chicago Bar Association
- American Intellectual Property Association
- International Trademark Association
- Institute of Electrical and Electronics Engineers (IEEE)
ACKNOWLEDGMENTS
- Illinois Leading Lawyer in Intellectual Property Law and Patents (2020)
PERSONAL
Chip focuses his non-legal energy on enjoying life with his wonderful wife and two boys. As lovers of the outdoors, the family is currently focused on its quest to visit the numerous National Parks across the country. Closer to home, Chip enjoys helping his elder son practice soccer, baseball, lacrosse and other sports, and working with his younger son in more artistic pursuits and Lego projects. Chip and his wife stay happily busy cooking together and continually finding home renovation projects.
What is one item on your bucket list? SUBA diving the Great Barrier Reef. This trip would kill a flock of birds with one stone. I’ve never been SCUBA diving, and I’ve never been to Australia. There are also amazing cities, and lush rainforest to see down under. And while I’m down there, I’m sure I can squeeze in a Lord of the Rings tour of New Zealand. The trip will have to wait, temporarily, until the whole family is ready to fully enjoy the experience.
What is your favorite place in Chicago? The Lake front trail, in which I will cheat and include Lincoln Park Zoo and Museum Campus. I lived downtown for a few years and could not get enough of running along the Lake. My wife and I would frequently take walks over to the Field, Shed or Adler and tour aimlessly around for an afternoon. Even now, we will often go as a family to one of the attractions and spend time biking along the Lake.
What is the best vacation you’ve ever been on? Just after graduating high school, I took a three week trip to Europe with my mom and older brother. We visited family in London and saw castles in Scotland. We visited France; stayed with friends living in the Black Forest in Germany; drove the autobahn; and toured Munich, Neuschwanstein and other towns across Germany. My bother any I finished out the trip with a week of hiking in the Swiss Alps.