Theodore Chiacchio

Theodore Chiacchio

Theodore Chiacchio is a Partner at SpencePC in Chicago, Illinois. Mr. Chiacchio, a PTO-registered patent attorney, has amassed over 15 years of experience litigating high-stakes, complex, federal civil cases. While Mr. Chiacchio’s litigation practice has focused predominantly on patent litigation, Mr. Chiacchio also has significant experience with other types of civil litigation, including copyright infringement, a range of other business torts, employment discrimination, and white collar civil enforcement matters. Mr. Chiacchio has substantial experience representing his clients before the USPTO’s Patent and Trial Appeal Board in connection with Inter Partes Review proceedings, in connection with which he has represented both patent challengers and patent-holders. Mr. Chiacchio has also spent a considerable portion of his career preparing Opinions of Counsel regarding patent infringement/non-infringement, patent validity/invalidity, patent enforceability/unenforceability, and freedom to operate. More generally, Mr. Chiacchio regularly counsels clients regarding all manner of patent-related strategy issues. Mr. Chiacchio’s patent law experience spans a range of technologies, including pharmaceuticals, computer software, mechanical (including medical devices), battery technologies, digital signage, and monitoring/tracking sensor technology, among other technologies. Mr. Chiacchio earned his Bachelor of Arts degree (Biology, French) from Bucknell University in 1999 and his Juris Doctor degree from Cornell University Law School in 2002. Prior to joining Spence PC, Mr. Chiacchio served as an associate at Kenyon & Kenyon (now part of Andrews Kurth Kenyon) and, most recently, practiced for just short of a decade at a top tier patent litigation boutique in Chicago.

For more information or to contact Mr. Chiacchio, please visit his Firm Profile Page.


Posts by Theodore Chiacchio


Federal Circuit Treatment of Inherency Arguments Aimed at Method of Treatment Patent Claims

This article examines Federal Circuit case law analyzing validity challenges to method of treatment patent claims where the claims at issue are alleged to recite an inherent …
By Theodore Chiacchio
13 days ago 5

The Federal Circuit’s Approach to the Infringement Analysis in Hatch-Waxman Cases

35 U.S.C. § 271(e)(2) provides that it shall be an act of infringement to submit an Abbreviated New Drug Application (“ANDA”) “if the purpose of such submission …
By Theodore Chiacchio
2 months ago 3

Examining CAFC Application of §271(g)(1)’s ‘Materially Changed’ Exception to Infringement Liability

35 U.S.C. § 271(g) was enacted in 1988 as part of the Process Patents Amendments Act to address instances where would-be infringers were avoiding infringement liability by using …
By Theodore Chiacchio
3 months ago 0

Analyzing obviousness and anticipation challenges to claims directed to an isolated component of a prior art mixture

Based on the governing Federal Circuit case law, where the patent claim at issue is directed to a specific component (such as a specific enantiomer) of a …
By Theodore Chiacchio
4 months ago 1

Avoiding drug development clinical trials from being an invalidating public use

The legal principles set out above, while seemingly straight-forward enough, leave ample room for case-specific interpretation and application when it comes to the question of whether the …
By Theodore Chiacchio
6 months ago 4

A review of enhanced damages since Halo: Minimizing potential exposure to enhanced damages

Since the Supreme Court’s decision in Halo, there have been approximately 100 cases analyzing whether the adjudged infringer acted egregiously/willfully en route to a determination of …
By Theodore Chiacchio
8 months ago 0