United States: Minnesota

Firms: litigation

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

Firms: prosecution

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

Firms: transactions

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

Barnes & Thornburg LLP

Barnes & Thornburg’s patent group is in fine fettle; not only is it in hot demand for prosecution in medical devices and other high-tech domains, it has achieved significant wins in pharmaceutical litigation and has a burgeoning inter partes review practice. Debuting in the IAM Patent 1000 this year, Jeffrey Stone – a named inventor on 12 patents – is a lynchpin of the procurement and portfolio management practice. He plays point on prosecution for Cardiovascular Systems which Barnes & Thornburg has been representing since it was a three-person start-up. Stone works double-overtime to deliver a product that fits with his clients’ commercial needs, leveraging an all-encompassing understanding of the technology and profound knowledge of the medical device industry. The firm’s litigation year was highlighted by a defence success for Eli Lilly and Company, in which the plaintiff sought damages over $80 million (which it planned on trebling) plus attorneys’ fees and in the end a jury awarded $20 million and denied enhanced damages and fees. Felicia Boyd figures out clear and resonant trail themes starting from day one of a case and stays the course without getting distracted. She has an excellent feel for post-grant proceedings and recently spoke before the Japanese Patent Office on the use of inter partes reviews for business purposes.

Carlson Caspers Vandenburgh & Lindquist, PA

Patent litigation is meat and drink for gold-tier Carlson Caspers. Drawing on its deep bench of first-chair trial lawyers, it deploys customised strike teams into battle for technology leaders with winning results. For example, Derek Vandenburgh and Doug Williams recently acted for Qualcomm in a multi-district litigation earning a summary judgment of non-infringement and an affirmance from the Federal Circuit. Further highlighting the set’s incredible efficiency, Alan Carlson, together with Vandenburgh, defended Dynamic Air in an infringement action brought by M-I Drilling Fluids, securing a covenant not to sue and a fees award after only limited discovery. All three lawyers are vastly experienced courtroom combatants – as a former Federal Circuit clerk, Vandenburgh is a leading appellate expert and Williams and Carlson have both been inducted as American College of Trial Lawyers fellows. Cut from the same cloth, Philip Caspers, Timothy Lindquist and Tara Norgard are further stars in the Carlson Caspers constellation; Caspers is the most experienced post-grant expert on deck and has been lead counsel in over 100 USPTO contested proceedings; Lindquist is a seasoned trial lawyer and a top expert on alternative dispute resolution; and Norgard is a business-minded and strategic lawyer and a tenacious opponent in the courtroom. She is currently busy working on a major trade secret matter.

Dorsey & Whitney LLP

Dorsey & Whitney’s patent practice is eminently well-rounded thanks to the seamless collaboration of its lawyers from New York to Seattle and the close integration of its litigation and prosecution professionals. Integral to the ensemble’s success are the contributions made by RJ Zayed and Clint Conner, two veteran trial lawyers stationed in Minneapolis. Zayed is unique among US litigators in the IAM Patent 1000 as his practice blends intellectual property and white-collar crime. He partners closely with his clients and implements business-focused yet cost-effective strategies. Patent litigation is Conner’s metier; in a recent 11-patent liquid crystal display technology case, he creatively utilised all of the tools at his disposal to eliminate the asserted patents one-by-one. He has close connections with Japanese companies having lived and worked in Tokyo for several years.

Faegre Baker Daniels LLP

“Faegre has an excellent litigation bench and is impressive in terms of the quality of its work and strategies in the district courts and at the PTAB. It provides clients with a high level of service too.” Making up a potent trial triumvirate in Minneapolis are Ken Liebman, James Poradek and Timothy Grimsrud. A senior authority when it comes to medical technology and IT litigation and transactions, Liebman came up in the game at Irell so he definitely has the trial chops. Poradek has the patience and articulation to teach law school students, judges and judicial clerks; his gift for making what is difficult seem simple and relatable also gives him a great advantage in court. Grimsrud has a background in chemistry and is technically dexterous; as an advocate, he takes a persuasive thematic approach. Faegre maintains a robust prosecution, portfolio management and strategic counselling practice central to which is Jason Kraus. He helps patrons stake out strong positions in competitive domestic and international markets.

Fish & Richardson

“At a national level, Fish sets the standard in both prosecution and litigation.” The firm is prolific on both fronts and marshals an army of 85 PhDs, a high-calibre set of post-grant specialists and some of the nation’s leading trial lawyers. The Minnesotan contingent by itself is richly resourced: Partick Finn III and Teresa Lavoie make up a superb life sciences prosecution, portfolio management and transactions practice; Dorothy Whelan and Michael Hawkins form a standout PTAB offering; John Adkisson is the trial supremo; and John Dragseth is the firm’s all-around IP strategist. All are worthy of special mention: Finn III, the managing principal of the Twin Cities office, handles strategically significant patent procurement tasks for the Mayo Clinic Rochester, the University of Minnesota and St Jude Children’s Research Hospital. Lavoie is a passionate attorney who really digs into the science, she thinks creatively on behalf of the many exciting start-up and emerging pharmaceutical and biotech companies she represents on deals and patent strategy. Whelan has had some striking inter partes review successes recently; she acted for Coherus BioSciences and invalidated three patents in Abbvie’s Humira patent portfolio – the first occasion on which Humira patents had been invalidated in the United States; in addition, when I-MAK filed petitioned for 10 inter partes reviews against her client Gilead Pharmasset she had all 10 denied – a great result particularly considering the 66% institution rate of inter partes reviews challenging Orange Book patents. Hawkins debuts in the IAM Patent 1000 this year; “his combination of expertise, reasoning ability, attention to detail and efficiency make him a powerhouse. He sees nuances in arguments and prior art that others don’t and can clearly elucidate them in writing and in oral presentations. He communicates equally well with engineers and business leaders.” Adkisson focuses on big-ticket pharmaceutical cases in district courts, although he also has ample post-grant lead counsel experience. Dragseth is best known for his appellate work – he gets called in by trial counsel inside and outside the firm to take on the most challenging issues at the Federal Circuit.

Fredrikson & Byron PA

Fredrikson & Byron offers the full suite of traditional prosecution, litigation and transactions services but distinguishes itself by the quality of the strategic business advice that it provides alongside them. For example, chair of the patent group Thomas Hipkins conducts risk assessments so that clients do all the right things on the front end of product development and will not find themselves being liable for wilful infringement down the line. He is suited to such tasks because he always stays abreast of patent law developments and has excellent project management skills. Charles Segelbaum is also more than just a prosecutor; he gets to know the wider business environment in which his clients operate by analysing the patents of their competitors. Ann Ladd and David West showcase exceptional commerciality in supporting the life sciences innovation ecosystem in Minnesota with their licensing expertise and complete transactional skill set. Litigators Kurt Niederluecke, Grant Fairbairn and Lora Friedemann look for business resolutions – they do not just turn on the litigation machine and let it run. Their practice is growing at a rate of knots thanks to excellent results in the district courts and at the PTAB. “Kurt and the team manage all cases strategically and efficiently and demonstrate a gift for predicting a plaintiff’s actions enabling them to move quickly and decisively.” On behalf of his client Hormel Foods Corporation, Niederluecke recently secured a favourable summary judgment in a trade secret action filed by Unitherm Food Systems seeing $60 million in damages. Fairbairn has an interesting case on right now for an inventor against the US Army relating to weapon-mounted rangefinder patents.

Merchant & Gould

Historic boutique Merchant & Gould offers every IP service under the sun to a diverse set of clients from individual inventors to multinational corporations – there is no IP conundrum it cannot crack. The firm’s litigation practice is one of its best features and Rachel Hughey one of its best district court and Federal Circuit litigators – she co-chairs the appellate practice. Her commitment to clients sees her getting involved in all phases of a litigation.

Patterson Thuente IP 

Mirroring the dynamism of its clients, Patterson Thuente IP approaches patent problems creatively and with relish, coming up with satisfying solutions that make business sense. James Patterson is looked to as a sounding board by his colleagues, by his clients and by other members of the legal community. He and Brad Pedersen both draw on more than three decades of work at the IP coalface and are percipient strategists. An American Intellectual Property Law Association board member, notable author of two reference guides entitled After the AIA, and an inventor with multiple patents to his name, Pedersen is a unique talent. Other names to note are Amy Salmela, a pillar of the ensemble’s international IP protection practice and Eric Chadwick, who wears the captain’s armband for the litigation group.

Robins Kaplan LLP

“Robins Kaplan knows how to try large cases very effectively – its lawyers have an edge and bring a bit of swagger to the practice.” Although they never play it fast and loose, Christopher Larus, Jake Holdreith, Martin Lueck, Christopher Seidl and Ronald Schutz are all swashbuckling trial lawyers who know what it takes to emerge victorious from the courtroom when everything is on the line. “Christopher Larus and Jake deserve a heap of credit not just for being great people and great litigators but as innovators in terms of strategy and patent monetisation.” Larus focuses on high-tech and mechanical matters, while Holdreith leads the life sciences line. Lueck is a fellow of the American College of Trial Lawyers and the International Academy of Trial Lawyers. Seidl helms the global business and technology sourcing disputes practice. Schutz serves as managing partner, sits on the executive board and is the main driver of the firm’s success on both sides of the docket. There is no point being a great trial practice these days unless you have a PTAB capability and giving the firm what it needs is Cyrus Morton, who chairs the patent office trials group.

Schwegman Lundberg & Woessner PA

“Schwegman Lundberg & Woessner is a top firm when it comes to patent prosecution. It has been built from the ground up with efficiency in mind and has tight systems and processes – it’s really an outstanding machine.” In terms of recent developments, the firm has bolstered its European practice with hires in London; implemented strategic diversity initiatives; and enhanced its IP support services with improvements to its sophisticated data automation tools. Micheal Schwegman, Steve Lundberg, Timothy Bianchi and Bradley Forrest form an exceptional team which represents leading medical device, software, hardware and electronics companies. The Schwegman practitioners certainly know how to protect their clients and create value for them through the astute management and deployment of intellectual property.

Seager Tufte & Wickhem LLP

Patent quality is everything for Seager Tufte & Wickhem; thorough checks not just from a partner but also a docketing paralegal apply to all work that goes out the door. Glenn Seager, Steven McAuley, Scot Wickhem and Brian Tufte are the set’s key players. Seager and McAuley are as knowledgeable as they come in the medical device field from both a technical and business perspective. Wickhem focuses on chemical matters – he is a former research company chemist and one of many at the firm who was a scientist before entering the law. Tufte is a master of the electrical, optical and mechanical arts.

Shumaker & Sieffert PA

“Shumaker & Sieffert offers top-quality prosecution services at incredibly competitive prices. The firm proactively seeks constructive criticism and is very responsive to it; takes the time to understand clients’ business objectives and align its product to them; reviews its own work thoroughly; makes recommendations purely in clients’ interests, not its own; and provides outstanding teaching and training opportunities.” Setting the tone are Steve Shumaker and Kent Sieffert who are “excellent in every respect” – as leaders, technical experts (Shumaker in electronics, software and medical devices and Sieffert principally in software), patent strategists and businessmen. Steeped in the medical device and aerospace sectors, Jessica Rauckman is an excellent listener who is always responsive to her clients’ business needs. Letting nothing languish, she manages her teams extremely well and is a brilliant educator. “Sanders Gwin has a broad technical background in physics and chemistry and a talent for rapidly understanding all the technologies to which he is exposed. He efficiently drafts quality patent applications while consistently coming in under budget. Highly experienced in US and foreign prosecution, he is particularly adept at handling problem cases and is an excellent opinion giver too. His demeanour is polite and courteous and he is generous with his time and humble in attitude – it is a genuine pleasure to work with him.”

Other recommended experts

Ciresi Conlin’s Michael Ciresi is a hero to many; he is a commercial and IP litigation heavyweight and a fellow of the American College of Trial Lawyers among other trial-focused professional organisations. A prosecution maestro with a broad technical compass and international horizons, Mark Hollingsworth of Hollingsworth Davis capitalises on eight years of industry experience as a senior electrical and research engineer to get into the nitty-gritty details of his clients’ innovations. Fox Rothschild transactional lawyer William Kaufman is “outstanding and a real gentleman. He advocates strongly for his clients while focusing on getting deals done.”

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
  • Doug J Williams - Carlson Caspers Vandenburgh & Lindquist, PA
  • John Adkisson - Fish & Richardson
  • Felicia J Boyd - Barnes & Thornburg LLP
  • Philip P Caspers - Carlson Caspers Vandenburgh & Lindquist, PA
  • Eric H Chadwick - Patterson Thuente IP
  • Michael V Ciresi - Ciresi Conlin LLP
  • Clint Conner - Dorsey & Whitney LLP
  • John A Dragseth - Fish & Richardson
  • Grant Fairbairn - Fredrikson & Byron PA
  • 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, PA
  • Martin R Lueck - Robins Kaplan LLP
  • Kurt Niederluecke - Fredrikson & Byron PA
  • Tara Norgard - Carlson Caspers Vandenburgh & Lindquist, 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, PA
  • RJ Zayed - Dorsey & Whitney LLP

Individuals: prosecution

  • Timothy E Bianchi - Schwegman Lundberg & Woessner PA
  • John A Dragseth - Fish & Richardson
  • J Patrick Finn III - Fish & Richardson
  • Steve Lundberg - Schwegman Lundberg & Woessner PA
  • Brad Pedersen - Patterson Thuente IP
  • Dorothy P Whelan - Fish & Richardson
  • Bradley A Forrest - Schwegman Lundberg & Woessner PA
  • H Sanders Gwin Jr - Shumaker & Sieffert PA
  • Michael Hawkins - Fish & Richardson
  • Thomas R Hipkins - Fredrikson & Byron PA
  • Mark A Hollingsworth - Hollingsworth Davis LLC
  • Jason Kraus - Faegre Baker Daniels LLP
  • Teresa A Lavoie - Fish & Richardson
  • Steven A McAuley - Seager Tufte & Wickhem LLP
  • James H Patterson - Patterson Thuente IP
  • Jessica Rauckman - Shumaker & Sieffert PA
  • Amy M Salmela - Patterson Thuente IP
  • Micheal Schwegman - Schwegman Lundberg & Woessner PA
  • 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

  • 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