United States: Minnesota

Firms: transactions

H
Fish & Richardson PC
Fredrikson & Byron PA
Robins Kaplan LLP
Schwegman Lundberg & Woessner PA

Firms: prosecution

Highly recommended
98
Fish & Richardson PC
Schwegman Lundberg & Woessner PA
Recommended
H
Fredrikson & Byron PA
Merchant & Gould
Seager Tufte & Wickhem LLP
Shumaker & Sieffert PA

Firms: litigation

1
Carlson Caspers Vandenburgh Lindquist & Schuman PA
Robins Kaplan LLP
2
Ciresi Conlin LLP
Faegre Baker Daniels LLP
Fish & Richardson PC
Merchant & Gould
3
Barnes & Thornburg LLP
Fredrikson & Byron PA
Barnes & Thornburg LLP
“The Barnes & Thornburg team clubs together with in-house professionals and proactively addresses all IP issues. Its attorneys are always available whether you need advice on something large or small; they also know their clients’ products and businesses and what impact ongoing changes in patent law will have. Furthermore, they manage portfolios in a way that matches budgetary requirements, and are forward thinking so as to give certainty on costs.” The firm handles litigation with a similarly deft touch. Coming to the rescue when things get dicey is Minneapolis-based IP group co-chair Felicia Boyd. A registered patent attorney with a background in chemistry, she is comfortable on the frontlines of technically demanding patent suits; she also maintains a vibrant soft IP litigation practice.
Carlson Caspers Vandenburgh Lindquist & Schuman PA
Newly minted in the IAM Patent 1000 litigation gold tier this year, Carlson Caspers Vandenburgh Lindquist & Schuman is a force to be reckoned with in the courtroom. Testament to this, it is one of only a handful of firms in the country with two American College of Trial Lawyers fellows who are also registered patent attorneys – Doug Williams and Alan Carlson. Demonstrating his zeal for innovation at every turn, Williams relishes the company of inventors and loves to tell their stories. Over the course of nearly 50 years, Carlson has cultivated a superlative track record of success in IP suits with many millions of dollars at stake. Another advocate you can trust with your commercial life is Derek Vandenburgh, an “outstanding strategist, excellent litigator and valued business partner” who cares passionately about his cases and the companies he represents. He takes his work personally and commits his efforts to securing the absolute best chance of a win. Of course, he is also one of the top appellate experts – certainly in the Midwest, but also nationally. In an “incredibly strong team”, Timothy Lindquist and Philip Caspers also stand out. Put Lindquist in any court or alternative dispute resolution forum and give him any high-tech invention, and he will present a compelling argument resonantly. Caspers is a fluent technician who can break down complex technology and make it simple for district court judges and juries. He can also respond rapidly and accurately to questions put by technically sophisticated administrative patent judges at the US Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB).
Ciresi Conlin LLP
Putting lean, hand-picked senior-level teams at the disposal of clients, litigation boutique Ciresi Conlin advocates with determination, tenacity and skill. It takes its community role seriously too, paying attention to the impact of its work on the wider IP and commercial environment in which it and its clients operate. Setting the tone are Michael Ciresi and Jan Conlin, both seasoned trial lawyers who have notched up many a high-profile victory. They overlay their fine-tuned knowledge of law, technology and litigation tactics with a commercial approach in order to deliver the most satisfying results.
Faegre Baker Daniels LLP
As a sophisticated full-service commercial outfit with a national footprint, a deep bench of trial-ready lawyers and abundant technical expertise, Faegre Baker Daniels has all the necessary prerequisites for success in the biggest patent litigations. “The firm is consistently impressive and has a strong team from top to bottom; no matter who does the work, it is of the highest standard.” That said, there are several individuals who stand out from the crowd, and none more so than James Poradek and Timothy Grimsrud. “Jim Poradek is one of the most gifted oral advocates anywhere – he has a lovely conversational style and is brilliant at taking complex technical subject matter and making it easy to understand and, above all, interesting. He is so quick on his feet, too.” “A wonderful lawyer who is much loved in the community”, Grimsrud has been on a roll in the medical device arena of late. He has an instinctive feel for the key themes that will turn a suit his way and positions his cases for trial effectively from the moment an action is filed. Ken Liebman’s combination of patent litigation and transactional expertise means that he is often called in to sort out disputes over licensing arrangements. The former Irell & Manella partner – and founding chair of Faegre’s IP practice – has tried $100 million-plus cases before juries across the United States. These litigators often call on their prosecution colleagues for file history insight and technical guidance and support. Leading the patent practice is Jason Kraus, an international portfolio development strategist with a sure touch for risk management and litigation avoidance.
Fish & Richardson PC
Gaining an almost unbeatable competitive edge from the combination of its market-leading patent litigation and prosecution practices, Fish & Richardson runs one of the top PTAB practices in the country. As co-chair of the post-grant section, Twin Cities resident Dorothy Whelan helps to ensure seamless cooperation between the contentious and non-contentious groups and to staff inter partes review teams with the best mix of people. In her own practice, she has enjoyed a banner year in the life sciences, earning a high-profile win for Coherus BioSciences by invalidating three patents covering AbbVie’s Humira drug; the portfolio protecting the product was previously thought to be invulnerable, but Whelan showed otherwise. The Minneapolis office is also home to another key cog within the Fish & Richardson machine, John Dragseth, who is one of the best appellate experts on the national roster. Gold-rated this year, he is “as up to speed as anyone in terms of case law developments coming out of the Court of Appeals for the Federal Circuit”. The former Federal Circuit law clerk has taken the lead on dozens of appeals, often showing great skill by turning around cases that were comprehensively lost by other firms at the district court level. On top of it all, the managing principal of the local office, Patrick Finn III, also happens to be one of the most popular patent preparation and prosecution guys around. Patrons queue up to sing his praises: “Patrick has a profound understanding of patent law and science which, when combined with his many years of experience, results in an exceptional performance. He effectively leverages his firm’s resources, including a sophisticated docketing system, communicates his advice efficiently and in a timely manner, and routinely exceeds expectations with his unmatched quality.”
Fredrikson & Byron PA
Fredrikson & Byron has a superbly well-rounded patent practice and can also boast strength in depth when it comes to litigation, prosecution, counselling and transactions. Making the package even more compelling for one-stop shoppers, it puts up talented and creative lawyers without charging an arm and a leg for their services. Helpful in this regard is a flexible mindset when it comes to billing arrangements, together with a sophisticated suite of project management tools, which enable the team to give accurate cost estimates for any given piece of work. The litigation practice has been busy, with new engagements in the medical device space (among many other areas) regularly landing on desks of litigators Kurt Niederluecke and Lora Friedemann. Niederluecke often deploys aggressive strategies fast in order to put opponents on the back foot; in a recent example of this, he secured a quick dismissal of trade secret claims made against his client Hormel Foods by Unitherm Food Systems, which sought $60 million in damages. Friedemann has proven her mettle as a lead trial lawyer in cases across the spectrum of IP rights. Few individuals know the ins and outs of practice before the District of Minnesota as well as she does. There is a tremendous amount of interplay between the litigators and colleagues in other IP units; when it is time to talk settlement, Niederluecke and Friedemann consult with commercial IP experts such as David West and Ann Ladd. Collaborations in the biopharmaceutical world are meat and drink to these transactional mavens, who have a sophisticated knowledge of hot topics in the life sciences industry, such as data privacy. Both also know how to get signatures on the dotted line of deals in the high-tech, internet and e-commerce areas. In the opinion of clients, Ladd is “exceptional in a number of ways. She really gets how to be a business partner to large and complex organisations; she approaches problems from multiple angles; she solves problems creatively; and she knows how to present effectively to business executives”. When it comes to IP due diligence, Charles Segelbaum is the man to call; his incisive analytical skills blend with a thoroughly commercial approach. A key ongoing storyline for the patent group is the growth of its opinions practice. As a prosecutor and counsellor, section chair Thomas Hipkins has always thought ahead and refined his strategies with the potential for litigation in mind; accordingly, he has successfully positioned himself as the go-to for risk assessments and freedom-to-operate opinions.
Merchant & Gould
A dyed-in-the-wool patent firm in operation since 1900, Merchant & Gould never stops evolving. The leadership provided by managing director, CEO and chair Brian Batzli is instrumental in this regard, but there are many others that help to keep the venerable boutique at the sharp end of patent practice. Rachel Hughey, for example, has been diligently boosting the set’s profile in the appellate space – an endeavour in which she has succeeded, judging by the increasing volume of appeal instructions arising out of cases handled elsewhere. The former Court of Appeals for the Federal Circuit clerk is a rising star with all the ingredients for effective appellate advocacy at her fingertips. The set remains a smart pick for district court patent trials, of course, and can put forward a number of quality lead counsel options from which to choose, including Daniel McDonald and Anthony Zeuli. McDonald showcases impressive technical range in the high-tech field and is always primed and ready; likewise Zeuli, a cost-effective advocate who brings a sense of comfort to clients by partnering closely and keeping them in the loop as cases twist and turn. On the non-contentious side, the Minneapolis office is a hotbed of mechanical patents expertise; local doyens Steven Bruess and David Schmaltz, for example, have an abundance of it. Both are highly adept at full lifecycle patent management and positioning portfolios for the greatest commercial advantage. “An exceptionally good IP firm” is the verdict on Minnesota boutique Patterson Thuente. Delighting in innovation in all its forms, the team feeds off the energy of its clients but gives a buzz in return, too; dynamic relationships form as a result, which leads to better output in turn. The enthusiastically praised James H Patterson “is super involved in the wider legal and IP community and a generous giver of his time and expertise”. When with his patrons, he acts as a high-level strategic adviser and sounding board. Brad Pedersen is also extensively engaged in an extra-curricular capacity and presently sits on the board of the American Intellectual Property Law Association (AIPLA). Pedersen is equally comfortable chewing the fat with inventors – after all, he is one himself – and giving strategic direction to the C-suite. He leads a patent group which contains “some real superstars” – people like Amy M Salmela, a “top-notch professional and incredibly smart counsellor with a great bedside manner”. Leading the litigation line is Eric H Chadwick, a commercial and results-oriented advocate who has gone the distance at trial several times, and won – as well as securing many favourable results outside the courthouse.
Robins Kaplan LLP
“Robins Kaplan is a top resource when it comes to patent litigation. It has a deep bench of great practitioners and gives an excellent service. In particular, it has lots of that rare commodity – trial experience.” The team maintains a laser trial focus throughout discovery – and even beforehand – so it comes to court prepared with finely honed narratives. This approach has been instilled by chair of the national IP and technology litigation division Ronald Schutz, a veteran advocate and “still one of the top performers”, and honed by other persuaders including Jake Holdreith, Martin Lueck and Cyrus Morton. Holdreith captains the life sciences practice and is a top representative of generic drug manufacturers in Hatch-Waxman Act litigations. Well rounded with antitrust and commercial litigation expertise, Lueck does plenty of patent work too, often in cutting-edge medical device cases. “Smart, diligent, calm and assertive” and a lynchpin of the firm’s post-grant success, Morton is “much more than just an inter partes review guy – he is a wonderful patent litigator all round”. Another integral part of the team, Marla Butler achieves great things for plaintiffs and defendants. She has recently been carrying the fight for Evolved Wireless against technology industry leaders. Monetising patent portfolios not just through enforcement but also via licensing is another trick that Robins Kaplan has mastered, with the standout magicians in this field being Christopher Larus and Christopher Seidl. Larus is in hot demand among mid-cap companies that want to explore licensing opportunities outside their core set of competitors; he provides them with rich quantitative data thanks to the clever deployment of the proprietary patent analytics tools he helped to develop. Interested parties should also note that Larus is a formidable litigator. Seidl chairs the global business and technology sourcing group and is hailed as “an outstanding counsellor” and “rising star when it comes to the larger patent assertions”.
Schwegman Lundberg & Woessner PA
For project-oriented, large-scale prosecution work, there are few better choices in the United States than Schwegman Lundberg & Woessner; put simply, it has excellent technical resources and an affordable pricing model. The firm constantly refines its back-office operations and automation, and informs its approach to prosecution with post-grant lessons learned, in order to obtain rights that will survive over the long term. In this regard, Steve Lundberg and Timothy Bianchi are “superb strategists who draft patent claim language that is enforceable and will drive value”. “To an extent that is rare, they are also very in-tune with the specific business goals of their clients, and how to best utilise intellectual property to meet them.” Bianchi, in particular, has a national reputation for excellence: “A one-stop shop, he can handle the technical aspects of prep and pros, the quasi-litigation of inter partes review, and can deliver a great pitch. He is also super-steeped in the law and constantly up to date in terms of prevailing market trends and developments.” Other names to note include high-tech gurus Micheal Schwegman, a sounding board for the thorniest problems, and Bradley Forrest, a former AIPLA board member who leverages extensive in-house experience.
Seager Tufte & Wickhem LLP
In Seager Tufte & Wickhem’s vocabulary, ‘quality’ means not just meeting the requirements of the law but meeting the business needs of the client – and the firm is scrupulous about both. Nothing goes out the door without a partner giving it the once over. Many patrons, including diversified conglomerates and some of the biggest names in the medical device field, have remained loyal over the years thanks to the precision of its preparation and prosecution and the sagacity of its freedom-to-operate opinions. The firm has a new face in the IAM Patent 1000 this year in Steven McAuley, who served as vice president and chief patent counsel for several Boston Scientific Divisions before coming on board. He joins chemist Scot Wickhem and electrical engineer Brian Tufte.
Shumaker & Sieffert PA
“Many big companies view Shumaker & Sieffert as the gold standard when it comes to efficiency and cost effectiveness – its systems are perfectly tailored to patent practice and it has very low overheads.” The firm’s polished suite of software tools (developed in-house) guides it through prosecution without any procedural hiccups, while a thorough second-attorney review process eliminates errors. Also worthy of note is the set’s dextrous protection of patents internationally via a carefully selected web of foreign associates and its savvy development of portfolios for standards-related inventions. The guiding lights are portfolio developers par excellence Steven Shumaker and Kent Sieffert. Shumaker focuses on patent procurement in the telecommunications, multimedia and medical device areas, and maintains an extensive infringement and freedom-to-operate counselling practice. Sieffert, whose work is software intensive, neatly overcomes Section 101 obstacles by mining the brains of inventors to define the contribution made by an innovation. In the mechanical arts, Jessica Rauckman is a standout. “A smart attorney who is well respected in the community”, she makes her debut in the guide this year.

Individuals: transactions

Brian Batzli - Merchant & Gould
D William Kaufman - Fox Rothschild LLP
Ann Ladd - Fredrikson & Byron PA
Christopher K Larus - Robins Kaplan LLP
Brad Pedersen - Patterson Thuente IP
Micheal Schwegman - Schwegman Lundberg & Woessner PA
Charles Segelbaum - Fredrikson & Byron PA
David West - Fredrikson & Byron PA

Individuals: prosecution

Highly recommended
Timothy E Bianchi - Schwegman Lundberg & Woessner PA
John A Dragseth - Fish & Richardson PC
Steve Lundberg - Schwegman Lundberg & Woessner PA
Brad Pedersen - Patterson Thuente IP
Dorothy P Whelan - Fish & Richardson PC
Recommended
Steven C Bruess - Merchant & Gould
J Patrick Finn III - Fish & Richardson PC
Bradley A Forrest - Schwegman Lundberg & Woessner PA
Thomas R Hipkins - Fredrikson & Byron PA
Mark A Hollingsworth - Hollingsworth Davis LLC
Jason Kraus - Faegre Baker Daniels LLP
Steven A McAuley - Seager Tufte & Wickhem LLP
James H Patterson - Patterson Thuente IP
Jessica Rauckman - Shumaker & Sieffert PA
Amy M Salmela - Patterson Thuente IP
David G Schmaltz - Merchant & Gould
Micheal Schwegman - Schwegman Lundberg & Woessner PA
Charles Segelbaum - Fredrikson & Byron PA
Steven J Shumaker - Shumaker & Sieffert PA
Kent J Sieffert - Shumaker & Sieffert PA
Brian N Tufte - Seager Tufte & Wickhem LLP
Scot Wickhem - Seager Tufte & Wickhem LLP

Individuals: litigation

Alan Carlson - Carlson Caspers Vandenburgh Lindquist & Schuman PA
Christopher K Larus - Robins Kaplan LLP
Martin R Lueck - Robins Kaplan LLP
Cyrus A Morton - Robins Kaplan LLP
Ronald J Schutz - Robins Kaplan LLP
Doug J Williams - Carlson Caspers Vandenburgh Lindquist & Schuman PA
Felicia J Boyd - Barnes & Thornburg LLP
Marla R Butler - Robins Kaplan LLP
Philip P Caspers - Carlson Caspers Vandenburgh Lindquist & Schuman PA
Eric H Chadwick - Patterson Thuente IP
Michael V Ciresi - Ciresi Conlin LLP
Jan M Conlin - Ciresi Conlin LLP
John A Dragseth - Fish & Richardson PC
Lora Friedemann - Fredrikson & Byron PA
Timothy Grimsrud - Faegre Baker Daniels LLP
Jake M Holdreith - Robins Kaplan LLP
Rachel C Hughey - Merchant & Gould
Ken Liebman - Faegre Baker Daniels LLP
Timothy A Lindquist - Carlson Caspers Vandenburgh Lindquist & Schuman PA
Daniel McDonald - Merchant & Gould
Kurt Niederluecke - Fredrikson & Byron PA
Brad Pedersen - Patterson Thuente IP
James W Poradek - Faegre Baker Daniels LLP
Christopher A Seidl - Robins Kaplan LLP
J Derek Vandenburgh - Carlson Caspers Vandenburgh Lindquist & Schuman PA
Anthony R Zeuli - Merchant & Gould
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Issue 91