Jeffrey R. Schaefer

Partner | Co-Chair, eDiscovery

Jeff co-chairs the firm’s eDiscovery practice group, a group within the firm’s litigation practice that brings together Ulmer attorneys with an interest in, and with significant experience in, the management of complex discovery issues in cases large and small.  Jeff has years of experience in all phases of eDiscovery including counseling clients on data preservation, initial assessments of data issues in new litigations, selection and retention of eDiscovery vendors, negotiations with opposing counsel regarding collection and production of electronically stored information, arguing in courts regarding discovery disputes, managing the collection, processing, review and production of materials responsive to discovery requests, and managing materials received in response to such requests.

Jeff’s IP practice encompasses patent, trademark, trade secret, and copyright disputes.  He participates in risk assessments, preparation of formal opinions, infringement investigations, client counseling, and litigation. His representative experience includes the early negotiation of a comprehensive multi-party license and settlement agreement on behalf of defendants in a cellular communications patent infringement case that resulted in a cost-effective resolution of the dispute; negotiation of a favorable settlement on behalf of an importer of printer ink cartridges accused of patent infringement in federal district court and in an International Trade Commission (ITC) Section 337 Investigation; investigation of acts of patent infringement on behalf of a major American machinery manufacturer that resulted in Jeff preparing and filing several ITC Section 337 Complaints to exclude importation of plastic molding machines with infringing control systems; and, more generally, assisting companies with cost effective responses to allegations of infringement by non-practicing entities and counseling manufacturers, importers, and retailers regarding numerous potential patent infringement issues involving both design and utility patents.

In addition to his intellectual property practice, Jeff has for many years been involved in the defense of drug and medical device manufacturers in product liability litigation. His focus in product liability litigation is on eDiscovery, scientific and medical issues, and expert witnesses. He has achieved the highest rating, AV Preeminent®, from Martindale-Hubbell®.

Education & Admissions

Education

  • Colgate University

    (A.B., Chemistry, 1977)

  • Scarlet Oaks Police Academy

    (Ohio Peace Officer Training Council Certification, 1983)

  • Salmon P. Chase College of Law, Northern Kentucky University

    (J.D., magna cum laude, 1992)
    Order of the Curia; Northern Kentucky Law Review 1990-91; Moot Court Member 1990-91; Chief Justice 1991-92

Admissions

  • State of Ohio
  • U.S. Supreme Court
  • U.S. Court of Appeals, Fourth Circuit
  • U.S. Court of Appeals, Fifth Circuit
  • U.S. Court of Appeals, Sixth Circuit
  • U.S. Court of Appeals, Seventh Circuit
  • U.S. Court of Appeals, Federal Circuit
  • U.S. District Court, Southern District of Ohio
  • U.S. District Court, Northern District of Ohio
  • U.S. District Court, Northern District of Texas
  • U.S. District Court, Eastern District of Texas
  • U.S. Patent & Trademark Office

Experience

REPRESENTATIVE EXPERIENCE

  • Manages all aspects of the eDiscovery process in multiple ongoing litigations as part of a team including attorneys, paralegals, and outside vendors.
  • Defended a group of affiliated telecommunications companies in two related patent infringement suits in the United States District Court for the Eastern District of Texas involving two-way electronic communications systems. Negotiated a comprehensive multi-party license and settlement agreement to obtain a cost-effective resolution of the dispute.
  • Participated in defense of drug and medical device manufacturers in tort litigation including breast implant litigation, diet drug litigation, pedicle screw litigation and knee implant litigation. This representation included Federal multi-district litigation (MDL) practice.
  • Investigated acts of patent infringement on behalf of major American machinery manufacturer and prepared and filed several Section 337 Complaints before the International Trade Commission for the purpose of preventing importation of infringing plastic molding machines.
  • Represented major American machine manufacturer in federal court cases involving patent infringement by competing manufacturers.
  • Counseled manufacturers, importers, and retailers regarding numerous patent infringement issues involving both design and utility patents.
  • Participated in defense of bad faith claims against insurer involving multimillion dollar claim relating to Hurricane Andrew damage in Florida.
  • Briefed and argued numerous cases, both civil and criminal, in appellate court, including intellectual property, medical malpractice, and drug product liability cases.
  • Represented numerous indigent criminal defendants in Pro Bono Public Defender Program.

Publications & Presentations

Presentations

  • “Challenging Patents in the United States after the ‘America Invents Act’ (AIA),” RGTH presentation (April 2016, Hamburg, Germany; Lisbon, Portugal)
  • “Reading Between the Lines of a License Offer Involving a U.S. Patent,” Heuking Kühn Lüer Wojtek, Workshop Patentverletzung – Feindliche Lizenzangebote (April 2016 Hamburg, Germany and June 2015, Munich, Germany)
  • “The Invasive Nature of Civil Discovery in the United States,” World Services Group (WSG) Patent Law Workshop (October 2014, United States)
  • “Overview of Changes in U.S. Patent Laws Resulting from the Leahy-Smith America Invents Act – Practical Consequences for European Companies and Patent Attorneys,” World Services Group (WSG) Patent Law Workshop (April 2013, Dusseldorf, Germany)

Involvement

PROFESSIONAL AFFILIATIONS

  • Ohio State Bar Association
  • Cincinnati Bar Association (Member, Intellectual Property Litigation Committee; 2002 CLE Coordinator; 2003-2004 Vice-Chair; Member, Court of Appeals Committee, Chair 2000-2001; Member, Professionalism Committee; Member, Admission to the Practice of Law Committee)
  • Federal Circuit Bar Association
  • International Trade Commission Trial Lawyers Association
  • Defense Research Institute
  • American Intellectual Property Law Association
  • The Sedona Conference (Working Group 1; Need for Guidance and Uniformity in Filing ESI Under Seal Brainstorming Group)

COMMUNITY INVOLVEMENT

  • Indian Hill Shooting Club (Member, Advisory Board, 2000-present)
  • National Rifle Association (Endowment Life Member)
  • Second Amendment Foundation (Life Member)
  • Hamilton County, Ohio Pro Bono Public Defender (1996-1999)

Honors

HONORS

  • AV Preeminent Peer Review Rated – Martindale-Hubbell
  • Cincinnati Academy of Leadership for Lawyers Fellow (CALL)

Personal

Outside of the office, Jeff enjoys fly fishing, shooting sports, motorcycles, and classical and bluegrass music.