United States - Minnesota

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: transactions

H
Fish & Richardson PC
Fredrikson & Byron PA
Schwegman Lundberg & Woessner PA

Firms: litigation

2
Carlson Caspers Vandenburgh Lindquist & Schuman PA
Faegre Baker Daniels
Fish & Richardson PC
Merchant & Gould
3
Barnes & Thornburg LLP
Ciresi Conlin LLP
Fredrikson & Byron PA
Barnes & Thornburg LLP
Making its debut in the IAM Patent 1000, the Minneapolis office of Midwest commercial powerhouse Barnes & Thornburg is home to Felicia Boyd, co-chair of the firm’s IP department. Having litigated an assortment of patent cases nationwide, she handles the thorniest disputes with composure; Boyd recently defended Eli Lilly and Brookshire Brothers in a major infringement suit brought by Erfindergemeinschaft UroPep. As a chartered arbitrator, she can also assist when alternative avenues are needed to resolve contentious issues. With 55 attorneys – 11 of whom possess PhDs – Barnes & Thornburg’s nationwide prosecution team draws upon a deep reservoir of technical wisdom in numerous fields; the Minnesotan contingent focuses on patent acquisition in the mechanical engineering and chemistry sectors.
Carlson Caspers Vandenburgh Lindquist & Schuman PA
“There isn’t a better Midwest practice for patent disputes", is the verdict on Carlson Caspers Vandenburgh Lindquist & Schuman. “Its professionals really know how to try a case and can hold their own against any opponent. They are thorough, diligent and have great ideas.” A champion of generic drug companies, the firm is also adept in the medical devices and telecommunications spaces. Recent highlights include clearing a path for Teva to sell generic versions of a Purdue Pharma multibillion-dollar product. The firm also triumphed lately for Exmark against Briggs Stratton, winning one of Nebraska’s largest-ever damages awards for wilful patent infringement, recovering legal costs and defeating post-trial motions filed by the opposition. The lead counsel in this case was Derek Vandenburg, a “high-quality lawyer with great gut instincts – as solid, thorough and reliable as they come in big-money cases”. He is praised especially for his “A grade” work in the appellate courts. His colleague, 40-year veteran Alan Carlson, is “a superb litigator who communicates simply and persuasively. He is a master of the art of trying a case; he remains calm and detached, finding the argument that will convince the jury”. Philip Caspers and Timothy Lindquist are other go-to lawyers in contentious circumstances. According to one respondent, Caspers “is one of the best patent strategists I have ever seen in my life and is terrific behind the scenes”. The multi-talented Lindquist helps clients to settle and avoid disputes; his varied court experience is matched by an impressive record in mediation and arbitration.
Ciresi Conlin LLP
Nimble litigation boutique Ciresi Conlin makes its first appearance in the guide this year, having garnered praise from fellow professionals since its establishment in 2015: “It is a great new firm with outstanding trial lawyers”. A former name partner at Robins Kaplan, Michael Ciresi is a hardened courtroom fighter with a “stellar reputation for pleading in landmark cases over many decades”. The versatile commercial lawyer has a nuanced appreciation of patent matters.
Faegre Baker Daniels
General practice Faegre Baker Daniels is a potent force in hotly contested patent disputes for an array of local, national and international companies. Its crack squad includes Timothy Grimsrud, a specialist IP trial lawyer who literally wrote the book on Winning Patent Litigation; he is also an astute operator in post-grant proceedings. The “extremely sharp and insightful” Ken Liebman is another key member of the team; adroit in litigation and due diligence, he is a particular favourite of clients in the medical and IT fields. For one peer, “excellent patent lawyer” James Poradek is “among the best I have ever seen in action – a great strategist and lightning fast on his feet”. Faegre also provides an admirable portfolio development service, overseen by judicious adviser Jason Kraus, whose grasp of electrical and mechanical inventions is popular with a slew of blue-chip innovators.
Fish & Richardson PC
The “smart professionals” at Fish & Richardson work seamlessly together to provide “excellent patent services across the board”. Covering all technical areas and drawing on substantial resources, the Minnesota team can handle any prosecution mandate with poise. “Effective and very knowledgeable”, biology and immunology PhD Patrick Finn collaborates with prestigious innovators in the biotechnology space, while Stephen Schaefer excels in the medical device and electronics arenas. Both professionals draft patents and proffer incisive strategic IP advice, but also bring their expertise to bear in dispute resolution. According to one client, Finn is “doubtlessly a highly skilled patent prosecutor; his approach has consistently been very effective, resulting in the best possible claims and minimising the amount of problematic prosecution history on our record. His talents, however, go well beyond this – he is an excellent adviser on patent matters in all business contexts. Whether in due diligence or in patent enforcement, Patrick’s strategic and legal insights have always been valuable”. Dorothy Whelan underpins the firm’s outstanding post-grant proceedings practice; she has a refined understanding of the intricacies of inter partes reviews. The “excellent” John Dragseth is a litigation ace; “possessing a detailed knowledge of case law, he is also compelling and informative in trial”. He recently prevailed for Halo Electronics in a milestone Supreme Court case against Pulse Electronics, which overturned existing legal tests for increased damages. Having acted before a number of courts, the accomplished professional is especially esteemed for his appeals work. Colleague Jonathan Singer is a redoubtable pharmaceuticals litigator who is tireless in his defence of plaintiffs’ rights.
Fredrikson & Byron PA
Proficient across the patent lifecycle, the Minnesotan branch of Fredrikson & Byron is particularly strong in technology transactions. Heading this side of the practice are strategic sages Ann Ladd and David West, both masters of avoiding conflicts and extracting optimum IP value through the intelligent use of licensing, joint ventures and other agreements. Also helping innovators to achieve their objectives are Charles Segelbaum and Thomas Hipkins, perspicuous counsellors on patent acquisition. Meticulous drafter Hipkins leads the prosecution team, providing farsighted advice on freedom-to-operate and pre-litigation matters; while electrical mechanical engineering whizz Segelbaum heads the due diligence team with finesse. Home to crack litigators such as Kurt Niederluecke and Lora Friedemann, the firm is also a compelling choice in contentious circumstances. Friedemann oversees the Fredrikson IP division; well versed in federal court procedures, the cogent trial lawyer has a knack for building winning strategies. Niederluecke is a patent specialist whose advocacy is coherent, engaging and persuasive. The disputes team recently successfully defended HM Electronics against 3M in an infringement case; after invalidating the opponent’s patents, it forced an end to court proceedings against its client. The group also prevailed for Hormel Foods against Unitherm Food Systems, winning summary judgment and quashing the major damages claims against its patron.
Merchant & Gould
Boutique Merchant & Gould has a “huge presence” on the patent landscape in Minnesota – the state in which it was founded more than a century ago. The team punches well above its weight in disputes, thanks in part to “wonderful lawyer” Daniel McDonald, a scrupulous and vastly experienced litigator who is immensely popular with innovators in the electronics and computing spaces. He recently enjoyed a number of successes as lead counsel for Medtronic Care Management Services in court and Patent Trial and Appeal Board proceedings against Robert Bosch Healthcare Systems. The strategically savvy and client-orientated Anthony Zeuli also has a flair for abstruse disputes; while newly featured pharmaceuticals ace and “excellent appellate lawyer” Rachel Hughey is a dexterous trial lawyer who delivers winning arguments with great lucidity. Merchant & Gould also has a team of elite patent prosecutors: commercially informed portfolio managers Steven Bruess and David Schmaltz are pros in the mechanical and electro-mechanical fields. CEO and managing director Brian Batzli makes sure that the team continues to house “great professionals who know exactly what they’re doing and provide a consistently excellent service”. Knowledge sharing and close collaboration among colleagues give Patterson Thuente’s professionals a 360-degree perspective on all facets of patent law. Star performers Amy Salmela and James Patterson have a gift for obtaining watertight intellectual assets. A former in-house counsel for a European semiconductor company, Salmela matches business acuity with a keen understanding of international portfolio development. The electrical engineering buff has a “wonderful reputation” in the medical devices, computer and semiconductor spaces. With decades of experience, Patterson is intimately familiar with IP law and can effortlessly circumnavigate the obstacles to technology protection. Eric Chadwick is the firm’s go-to professional for disputes; a robust but pragmatic advocate, he knows how to secure the best outcome. Tying the different threads of the practice together is Brad Pedersen, the patent group leader and a passionate inventor in his own right. With “intricate knowledge of legal trends” – especially regarding the America Invents Act – he is a discerning rights manager who knows exactly where the pitfalls and opportunities lie for innovators. Also superb in post-grant proceedings, he can weave a convincing narrative in contentious circumstances. The sharp shooters at Robins Kaplan have a “gold-star reputation” for their assured handling of must-win disputes, whether at federal court, the Patent Trial and Appeal Board or in arbitration. Spearheading the national IP litigation group is Ronald Schutz, a big league trial lawyer with a history of securing significant damages for his clients. He recently won multimillion-dollar damages for Megdal Associates in a technology licensing dispute with La-Z-Boy. Alongside him, the excellent Jake Holdreith heads the health and life sciences group, which has a glittering reputation and provides steadfast defence of generic drug companies in abbreviated new drug application litigation. One patron enthuses: “He develops a compelling case and knows what he needs to prove in court. Jake is creative and sees issues from all angles, but quickly finds the best arguments. His counsel is informed by a fine-tuned sense of business and legal priorities. He is one of our best lawyers and we trust him with our most important cases.” These qualities were in evidence recently when Holdreith invalidated one of Purdue’s patents in a bench trial, clearing a path to market for one of Lupin Somerset’s major products. Another mainstay, fellow of the American College of Trial Lawyers Martin Lueck communicates effectively with juries in a range of commercial law cases; while “top-shelf” professional Christopher Larus dazzles with clever enforcement and monetisation strategies. Larus lately prevailed in the district and appellate courts for PCT International against Holland Electronics. Adding further diversity are polished litigator, arbitrator and mediator Marla Butler and post-grant trial whizz Cyrus Morton, who recently successfully mounted a short-notice defence of Celgard’s lithium battery patents in inter partes review proceedings.
Schwegman Lundberg & Woessner PA
“Light years ahead of any other firm in the state”, Schwegman Lundberg is widely lauded as a “fantastic strategic prosecution practice”. With a culture of excellence, ground-breaking analytics software and a laser focus on work before the US Patent and Trademark Office, the firm is supremely skilled in developing and managing cast-iron patent rights for blue-chip innovators. The firm has a panoramic outlook and has carved an impressive niche in international patent acquisition. One patron praises its “efficient work and cutting-edge, crystal-clear advice, which has been the difference between floating and sinking for me, given the volume of work I need done”. Electronics and software aficionado Steve Lundberg is a driving force behind the firm; the deft drafter and freedom-to-operate expert is also a thought leader brimming with entrepreneurial enthusiasm. Other star prosecutors include 30-year veteran Bradley Forrest, who has obtained patents across a plethora of technology sectors; and computing and medical device sage Michael Schwegman, a discerning adviser who is also sure footed in tricky licensing matters. Schwegman Lundberg also has a spotless reputation for inter partes reviews, thanks in no small part to the “wonderful” Timothy Bianchi, an “amazing big-picture strategist”. Technically acute and intimately familiar with the way patent examiners think, he is an indispensable ally in post-grant disputes.
Seager Tufte & Wickhem LLP
Seager Tufte & Wickhem’s hands-on partners and rigorous quality control systems translate into first-class patent services across the non-contentious spectrum. Its collaborative, tailor-made approach to client care has led to longstanding relationships with numerous household names. Percipient portfolio developer Brian Tufte has a flair for electrical and mechanical inventions. Steeped in industry experience, he understands how to maximise the commercial value of patents – as does his colleague Scot Wickhem. As a medical device and chemistry don, Wickhem’s talents lie in shaping business strategies for innovation and providing on-point validity and infringement assessments.
Shumaker & Sieffert PA
Shumaker & Sieffert has “tremendous lawyers and attorneys with a lot of talent. It is an outstanding prosecution firm which consistently meets high standards”. Steven Shumaker has a propensity for obtaining robust patents in the electrical engineering and medical devices space; the former 3M in-house counsel and ex-patent examiner sees intellectual property from all angles. Fellow founding partner Kent Sieffert is an elite portfolio manager with finely honed strategic instincts and intricate knowledge of electronics and software inventions. The two professionals impart their wisdom as adjunct professors of law at the University of Minnesota.

Individuals: transactions

Brian Batzli - Merchant & Gould
D William Kaufman - Fox Rothschild LLP
Ann Ladd - Fredrikson & Byron PA
Christopher K Larus - Robins Kaplan LLP
Stephen Schaefer - Fish & Richardson PC
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
Recommended
Steven C Bruess - Merchant & Gould
John A Dragseth - Fish & Richardson PC
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
Steve Lundberg - Schwegman Lundberg & Woessner PA
James H Patterson - Patterson Thuente IP
Brad Pedersen - Patterson Thuente IP
Amy M Salmela - Patterson Thuente IP
Stephen Schaefer - Fish & Richardson PC
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
Dorothy P Whelan - Fish & Richardson PC
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
Ronald J Schutz - Robins Kaplan LLP
Jonathan Singer - Fish & Richardson PC
Anthony R Zeuli - Merchant & Gould
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
John A Dragseth - Fish & Richardson PC
Lora Friedemann - Fredrikson & Byron PA
Timothy Grimsrud - Faegre Baker Daniels
Jake M Holdreith - Robins Kaplan LLP
Rachel C Hughey - Merchant & Gould
Ken Liebman - Faegre Baker Daniels
Timothy A Lindquist - Carlson Caspers Vandenburgh Lindquist & Schuman PA
Daniel McDonald - Merchant & Gould
Cyrus A Morton - Robins Kaplan LLP
Kurt Niederluecke - Fredrikson & Byron PA
Brad Pedersen - Patterson Thuente IP
James W Poradek - Faegre Baker Daniels
J Derek Vandenburgh - Carlson Caspers Vandenburgh Lindquist & Schuman PA
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Issue 84