United States: Minnesota

Firms: litigation

  • Carlson Caspers Vandenburgh & Lindquist, PA
  • Fish & Richardson
  • Robins Kaplan LLP
  • Dorsey & Whitney LLP
  • Fredrikson & Byron PA
  • Merchant & Gould
  • Patterson Thuente IP

Firms: prosecution

  • Highly recommended
  • Fish & Richardson
  • Schwegman Lundberg & Woessner PA 
  • Shumaker & Sieffert PA
  • Recommended
  • Fredrikson & Byron PA
  • Greenberg Traurig LLP
  • Merchant & Gould
  • Patterson Thuente IP
  • Seager Tufte & Wickhem LLP

Firms: transactions

Carlson Caspers Vandenburgh & Lindquist, PA

Patent litigation is the bread and butter of Carlson Caspers, a boutique that relishes diving into cutting-edge technologies, unanswered legal questions and high-stakes business issues in the courtroom. Alan Carlson, Philip Caspers, Derek Vandenburgh, Timothy Lindquist, Doug Williams and Tara Norgard all bring the heat and have major jury verdicts and big-ticket awards on their CVs. Their collective track record of success spans district courts across the country, the PTAB, the Federal Circuit, the Supreme Court and arbitral forums; wherever a dispute takes them, they are ready with strategies that instantly turn things in their favour.

Dorsey & Whitney LLP

Companies facing off against competitors in mission-critical patent infringement suits rely on Dorsey & Whitney for full-bodied representation. Its trial lawyers – of which it has many between its Salt Lake City, Seattle, Denver and Minneapolis offices – are ready to roll in any forum and in disputes involving just about any technology. Minneapolis-based Clint Conner is one of the winningest among them. He has ample ITC experience – some of it gained representing Japanese and other companies on US matters during a stint in Tokyo – and recently settled a matter filed at the ITC (and in parallel in the Northern District of Ohio) by LILLEbaby against client BabyBjörn, a household-name childcare products company.

Fish & Richardson

Towering boutique Fish is a compelling choice for the most dynamic, innovative and prestigious companies in the life sciences; its global capabilities, technical know-how, prosecution prowess, deal-making record and trial supremacy give it a huge advantage. The firm has a concentration of industry experts in its Twin Cities office, including Patrick Finn, Teresa Lavoie, Betsy Flanagan and John Adkisson. Prosecution maestro and all-round strategic counsellor Finn “understands both hardcore biotechnology and business, and is a true partner to clients in their efforts to bring lifesaving treatments to patients”. Throughout the patent and product lifecycle, Lavoie provides essential insight, analysis and action plans, and has been sensationally successful in developing portfolios that realise billions of dollars in value on sale. An assured litigator, Flanagan recently represented Mayo Medical Laboratories in a suit against Athena Diagnostics that raised fundamental questions regarding the patent eligibility of medical diagnostic tests, earning a critical win at the Federal Circuit; the Supreme Court’s denial of Athena’s petition for cert in January 2020 brought the case to a close. In this litigation, the district court and Federal Circuit cited Mayo’s 2012 precedent-setting Supreme Court win against Prometheus, which was also orchestrated by Fish. In the recent matter, Flanagan worked alongside John Adkisson, a Hatch-Waxman ace who has also been making waves in biosimilar litigation. Accustomed to leadership, having previously helmed the firm’s market-leading, 200-plus lawyer litigation group, Adkisson assumed the post of president and CEO in February 2020. Other Minnesotan stars include William Woodford and John Dragseth. Woodford has led trial teams to emphatic wins, but also spends his time designing alternative fee models and establishing efficient strategies to bring down the cost of litigation – initiatives that form a central plank of Fish’s wider innovation effort. Dragseth is celebrated as one of the country’s pre-eminent appellate lawyers. Special attention should also be paid to Fish’s prolific post-grant offering – particularly considering its recent milestone in becoming the first firm to chalk up 1,000 PTAB appearances. The post-grant group is co-chaired by Dorothy Whelan, who has played a key strategic role in hundreds of those appearances. Coming in for praise, Michael Hawkins “demonstrates aa complete mastery of inter partes review practice in terms of filing and defending petitions”. His recent work highlights, though non-disclosable, have all seen him represent companies that anyone would know. Stuart Nelson has handled inter partes reviews in the triple digits and is another rock-solid choice.

Fredrikson & Byron PA

Highly proficient at the intersection of intellectual property, technological development and business, Fredrikson & Byron combines a sophisticated patent offering with complementary insight in data privacy, cybersecurity and other matters of importance to innovative companies. Communicating on a one-to-one level with inventors, in-house counsel and the C-suite, its attorneys make light work of complex prosecution, litigation and transactional briefs. Taking the reins of the prosecution group, Thomas Hipkins homes in on clients’ underlying objectives, accurately analyses the risk landscape and proposes optimal patent protection strategies. He supports, among others, a diversified technology and manufacturing entity and a pioneering medical diagnostics company – both global leaders. For the latter, he links up with Chuck Segelbaum in an effective pairing. Segelbaum gets right down to business, figuratively and literally: his advice is straightforward and direct, as well as commercially focused. Extensive engagement in due diligence has given him a fine appreciation of patent value. This is shared by Ann Ladd and David West, the central pillars of the firm’s technology transactions practice. They have an informed view of the market and great judgement, which they capitalise on in practical and problem-solving ways. Ladd is further applauded for her “exceptional responsiveness and partnering approach to achieving clients’ goals” – predominantly within the life sciences, medical technology and healthcare industries. These are also strongholds for West, although her recent deal activities have been concentrated in the manufacturing sector. Another secret to the ensemble’s contentious success is the dynamic teamwork that sees Kurt Niederluecke, Lora Friedemann and Grant Fairbairn regularly collaborate. Niederluecke and Friedemann, for example, recently showed their tenacity in defending Medtronic in a suit filed by Teleflex Innovations asserting infringement of seven patents; they succeeded in having the plaintiff’s preliminary injunction motion denied and stayed the district court case upon institution of more than 10 inter partes reviews seeking to invalidate the plaintiff’s patent claims. Niederluecke and Fairbairn, meanwhile, are representing Edelbrock against competitor Whipple Superchargers in a dispute involving superchargers and intercoolers for performance cars. They don’t just run the standard playbook, but carefully calibrate strategies for each matter.

Greenberg Traurig LLP

With its entrepreneurial, innovative mindset, Greenberg Traurig is the perfect match for businesses in the Twin Cities; and as intellectual property is a focal point of its Minnesotan offering, it’s a great choice for vital patent matters. Alexander Kim, who anchors the practice, enjoys a sterling reputation locally and acts for a St Paul-based civil engineering company. Fluent in Korean, he also attracts a slew of instructions from the Asia-Pacific region and has recently successfully prosecuted a US patent for a university and research and development foundation in Seoul – a matter that was transferred to him from another firm which had allowed the application to languish. Kim has a background in physics and chemistry and an extremely diverse workload from a technology perspective, ensuring that he stays sharp and ready for anything.

Merchant & Gould

Merchant & Gould is a major deal in Minneapolis: headquartered in the city, it has been at the forefront of local IP practice for over 120 years. It is home to a large contingent of attorneys, patent agents, project managers, paralegals and other staff who collectively provide a 360-degree patent service encompassing myriad scientific and engineering disciplines. Those embroiled in complex cases would do well to call in litigator Rachel Hughey, an accomplished advocate and brief writer who knows her way around the Federal Circuit: she’s a former law clerk at the appellate body and has supervised many appeals in her private practice career.

Patterson Thuente IP

The complete package, Patterson Thuente IP is a discerning choice for high-level strategic patent counsel, precise and efficient prosecution services and robust representation in complex litigation. Notable recent developments include the October 2020 addition of David Swenson as chair of the litigation practice. A force to be reckoned with at trial, Swenson is also distinguished by his appellate expertise and abundant appearances at the Federal Circuit, and debuts in the IAM Patent 1000 this year. Making their return to the rankings, meanwhile, are James Patterson, Brad Pedersen and Amy Salmela – three professionals with broad IP horizons who make a difference for clients in many meaningful ways. Patterson has instilled an unwavering service mentality in the group while setting the highest standards as a portfolio manager, clear-sighted global strategist and opinion giver. Chair of the patent group Pedersen sees the whole playing field, too, thanks to his diverse experience in technology, entrepreneurship and law; like Patterson, he has a talent not just for creating valuable IP assets, but also for putting them to use in business.  Commercial growth is likewise an outcome prioritised by Salmela, who is blessed with rich international legal knowledge and excellent connections.

Robins Kaplan LLP

Few do it better in the courtroom than Robins Kaplan: outthinking, outworking and generally running rings around opponents, the practitioners in its IP and technology litigation group have pursued perfectly pitched, custom-designed strategies to victory in myriad technology areas and in all forums. Industry leaders put huge faith in, and are never let down by, trial doyens such as executive board chair Ron Schutz, who has a glittering record of jury verdicts. The group’s success stems not only from refined oral advocacy skills, however, but also from exceptional diligence in all litigation phases. On global business and technology sourcing group chair Christopher Seidl, one client comments: “Chris leads teams that partner with us to mine portfolios, stress-test use cases and build litigation strategies, as well as execute them. He and his colleagues understand how our business operates and they tailor their service to our needs.” The lawyers here are much more than just hired guns – for example, of health and life sciences leader Jake Holdreith, another referee remarks: “More so than almost any external counsel I have encountered, Jake is a business adviser. He is a pre-eminent trial lawyer who understands how litigation strategies align with our overall business objectives.” The lawyers here channel lots of other qualities. Patrick Arenz “has an unmatched work ethic and is a phenomenal writer and powerful communicator. He is sharp, principled and makes all the right decisions when it comes to legal strategy. To work with him is to be on the winning team”. Christopher Larus, meanwhile, blends expertise in patent monetisation and litigation to drive outcomes – in and out of court – that generate revenue growth. He brings strong leadership to the national IP and technology litigation group; while Cyrus Morton gifts it with vital post-grant proceedings insight.

Schwegman Lundberg & Woessner PA 

A stellar boutique at the forefront of innovation in patent practice, Schwegman has a virtually unsurpassed reputation for sophistication and quality. Notable threads in the firm’s recent narrative include deploying state-of-the-art docketing, analytics and machine learning tools to drive efficiency, and deepening its international expertise with the addition of attorneys schooled in European and Chinese patent law. Taking advantage of its well-developed remote working infrastructure, which it has invested in since its earliest beginnings, the firm has also maintained its outstanding service and collaborative culture throughout the pandemic without interruption. Schwegman has a new name in the IAM Patent 1000 for 2021 in Suneel Arora, whose ability to keep plates spinning in perfect balance for large institutional technology companies with global portfolios and patent needs earns him credit. His practice accentuates the protection of electrical software, mechanical and biomedical technologies. Making their return to the listings, meanwhile, are Steven Lundberg, Timothy Bianchi and Bradley Forrest, who each benefit the group in unique ways. Lundberg is the engine of the firm’s legal technology innovation and an authority on software patenting; Bianchi is an internationally acclaimed strategist and post-grant proceedings leader; and Forrest has a passion for technology and a first-hand understanding of the invention process, having previously managed the IP department of IBM.

Seager Tufte & Wickhem LLP

Seager Tufte & Wickhem has the fundamentals of patent preparation and prosecution down cold. Its lawyers, patent agents, engineers and scientists apply themselves with exceptional rigour to the task of obtaining watertight protection for clients’ most critical innovations. Far from just a filing shop, it flexes polished portfolio development, strategic counselling and transactional skills to deliver a reassuringly well-rounded service. Forming the backbone of the team are medical device and asset management ace Glenn Seager; electrical engineering sage Brian Tufte; commercial IP strategist and chemical and mechanical arts specialist Scot Wickhem; and former chief patent counsel Steven McAuley, who has a loyal following of life sciences and medical device players.

Shumaker & Sieffert PA

Glowing references mark Shumaker & Sieffert out as a high-performance patent boutique: “In instituting several stages of review for any work (regardless of who produced it), its deliverables are highly refined. Its docketing system is incredibly robust, so you can rely on it to handle everything from matter intake to filing without needing to send reminders. The firm has excellent leaders who stay on top of the latest developments in technology and the law; while its attorneys have expertise in a wide variety of technical fields and an uncanny ability to get things right the first time. A lot can be learned from seeing them in action.” The architects of this compelling model, Steven Shumaker and Kent Sieffert “are essential partners who think strategically about how patents translate into business value for clients”. Sanders Gwin is well known in the Twin Cities IP community for his “sharp intellect, soft-spoken wisdom and genuine love of patent law”. “He gives concise, spot-on legal advice, and drafts strong patent specifications and diverse claims that have a clear scope and meaning, and are more likely to withstand an invalidity attack in litigation. He also constantly seeks ways to create efficiencies and find cost savings.” Jessica Rauckman “thinks about the big picture before generating an application and delivers highly sophisticated work”. In terms of specialisation, Shumaker, Sieffert and Rauckman have concentrations in electronics and software; while Gwin distinguishes himself in the chemicals, materials and mechanics spaces.

Other recommended experts

Norton Rose Fulbright’s Felicia Boyd is brilliant at managing and coordinating large IP cases – and at presenting them in court. She also has sparkling alternative dispute resolution credentials. Co-chair Eric H Chadwick is building up momentum for the IP litigation group at DeWitt. Having tried multiple cases to verdict, he knows exactly what to do in the courtroom and how best to do it. Timothy Grimsrud is a trial lawyer with an advanced degree in chemistry; his blend of advocacy skill and technical aptitude gives him an advantage in PTAB proceedings, which are a regular component of his practice. His colleague at Faegre Drinker Biddle Jason Kraus leans in to the litigation effort, but predominantly focuses on portfolio building. His background is in mechanical engineering. Chemistry PhD Scott Rothenberger shows an impressive command of prosecution, licensing and litigation, and draws on a well-developed patent toolkit to support the business development of his cutting-edge chemical, pharmaceutical and biotechnology clientele. Fellow Barnes & Thornburg practitioner Jeffrey Stone concentrates on prosecution and counselling, but has a facility for licensing. He has a cultivated knowledge of the medical device industry.

Individuals: litigation

  • Alan Carlson - Carlson Caspers Vandenburgh & Lindquist, PA
  • Christopher K Larus - Robins Kaplan LLP
  • Cyrus A Morton - Robins Kaplan LLP
  • Ronald J Schutz - Robins Kaplan LLP
  • J Derek Vandenburgh - Carlson Caspers Vandenburgh & Lindquist, PA
  • Doug J Williams - Carlson Caspers Vandenburgh & Lindquist, PA
  • John Adkisson - Fish & Richardson
  • Patrick M Arenz - Robins Kaplan LLP
  • Felicia J Boyd - Norton Rose Fulbright US LLP
  • Philip P Caspers - Carlson Caspers Vandenburgh & Lindquist, PA
  • Eric H Chadwick - DeWitt LLP 
  • Clint Conner - Dorsey & Whitney LLP
  • John A Dragseth - Fish & Richardson
  • Grant Fairbairn - Fredrikson & Byron PA
  • Betsy Flanagan - Fish & Richardson
  • Lora Friedemann - Fredrikson & Byron PA
  • Timothy E. Grimsrud - Faegre Baker Daniels LLP
  • Jake M Holdreith - Robins Kaplan LLP
  • Rachel C Hughey - Merchant & Gould
  • Timothy A Lindquist - Carlson Caspers Vandenburgh & Lindquist, PA
  • Kurt Niederluecke - Fredrikson & Byron PA
  • Tara Norgard - Carlson Caspers Vandenburgh & Lindquist, PA
  • Christopher A Seidl - Robins Kaplan LLP
  • David Swenson - Patterson Thuente IP
  • William Woodford - Fish & Richardson

Individuals: prosecution

  • Timothy Bianchi - Schwegman Lundberg & Woessner PA 
  • John A Dragseth - Fish & Richardson
  • J Patrick Finn III - Fish & Richardson
  • Teresa A Lavoie - Treeline Biosciences
  • Steven Lundberg - Schwegman Lundberg & Woessner PA 
  • Brad Pedersen - Patterson Thuente IP
  • Dorothy P Whelan - Fish & Richardson
  • Suneel Arora - Schwegman Lundberg & Woessner PA 
  • Bradley Forrest - Schwegman Lundberg & Woessner PA 
  • H Sanders Gwin Jr - Shumaker & Sieffert PA
  • Michael Hawkins - Fish & Richardson
  • Thomas R Hipkins - Fredrikson & Byron PA
  • Alexander Kim - Greenberg Traurig LLP
  • Jason Kraus - Faegre Baker Daniels LLP
  • Steven A McAuley - Seager Tufte & Wickhem LLP
  • Stuart Nelson - Fish & Richardson
  • James H Patterson - Patterson Thuente IP
  • Jessica Rauckman - Shumaker & Sieffert PA
  • Scott Rothenberger - Barnes & Thornburg LLP
  • Amy M Salmela - Patterson Thuente IP
  • Glenn Seager - Seager Tufte & Wickhem LLP
  • Charles Segelbaum - Fredrikson & Byron PA
  • Steven J Shumaker - Shumaker & Sieffert PA
  • Kent J Sieffert - Shumaker & Sieffert PA
  • Jeffrey R Stone - Barnes & Thornburg LLP
  • Brian N Tufte - Seager Tufte & Wickhem LLP
  • Scot Wickhem - Seager Tufte & Wickhem LLP

Individuals: transactions

  • Ann Ladd - Fredrikson & Byron PA
  • Christopher K Larus - Robins Kaplan LLP
  • Teresa A Lavoie - Treeline Biosciences
  • Brad Pedersen - Patterson Thuente IP
  • Charles Segelbaum - Fredrikson & Byron PA
  • David West - Fredrikson & Byron PA