United States: Minnesota

Firms: litigation

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

Firms: prosecution

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

Firms: transactions

Carlson Caspers Vandenburgh & Lindquist, PA

Working as a close-knit team to win patent trials and facilitate business success for clients is the modus operandi of sleek IP litigation boutique Carlson Caspers. Its highly accomplished advocates, who like to be hands-on through all phases of litigation, know how to build up a case and execute a tight strategy to carry the day. The level of experience on show is incredible. Alan Carlson and Doug Williams have been in the thick of IP litigation for 50 years and 40 years respectively, and are both American College of Trial Lawyers fellows; coming up to three decades in the game, Phil Caspers has a stacked résumé of victories and is an anchor of the firm’s much-vaunted post-grant practice; Derek Vandenburgh is another peak performer who is celebrated for his Federal Circuit expertise and all-round strategic brilliance; former Federal Circuit law clerk Timothy Lindquist is ideally placed for appeals, but handles briefs assuredly in all forums; while Tara Norgard is as commercial as IP litigators come, invariably securing meaningful results.

Dorsey & Whitney LLP

Fuelled by their own technical know-how and that on offer from colleagues in a robust prosecution and portfolio management practice, Dorsey & Whitney’s patent litigators dispatch even the most complex infringement mandates with confidence and poise. High-technologist Clint Conner has the science down pat, which he demonstrates regularly in inter partes reviews, federal court and ITC cases. He’s a true team player who stays the course in hard-fought cases to protect his clients. RJ Zayed, the immediate past head of the IP litigation group, is cut from the same cloth, but has more seasoning as a trial lawyer, having tried a remarkable 60 cases to jury verdict.

Faegre Drinker Biddle & Reath LLP

“Faegre provides an excellent level of service and has highly experienced lawyers who are deeply knowledgeable not just about US law, but also international patent law, and who translate their knowledge into cogent rights protection strategies.” Especially effective in this regard is Jason Kraus, an adept cross-border IP value creator. Faegre’s litigation game is on point, too, thanks to the efforts of seasoned trial and appellate lawyers such as Timothy Grimsrud. “Tim is just really plugged into how patent law is evolving and is extremely skilled.”

Fish & Richardson

Fish’s superiority across all areas of patent practice is built on solid foundations in prosecution; the firm has never wavered in its mission to deliver copper-bottomed patents to the world’s leading innovators. Within its 78-strong team of prosecution-focused principals, there are many standouts across the country. In Minneapolis, one of those is microbiology and immunology PhD Patrick Finn III, a master of all he surveys in the life sciences. Another is chemistry PhD Teresa Lavoie, who has recently been making waves on the deal side; the early-stage companies whose portfolios she builds and with which she collaborates closely through financing and partnering invariably exit with multibillion-dollar bangs. Channelling its combined prosecution and litigation proficiency, Fish has undoubtedly become one of the country’s top PTAB players and contributions to its formidability come from several partners locally, including Dorothy Whelan, Michael Hawkins and Stuart Nelson. Whelan co-chairs the post-grant group and has notched up countless successes in life sciences inter partes reviews – a big one being the invalidation of Humira patents on behalf of Coherus BioSciences. Extremely busy fighting the corners of household-name high-technology companies, Hawkins is running hot and heavy right now; so too is Nelson, whose technical fluency in myriad areas affords him many opportunities. Fish is perhaps best known for its patent litigation chops and dynamism in trial settings. Bringing the heat from their base in Minneapolis are president elect and CEO John Adkisson, who collaborates with Whelan on the Coherus work; and fellow pharmaceutical and biologics ace Betsy Flanagan. Whether from trial courts or the PTAB, when matters go up on appeal, the firm has a not-so-secret weapon in pre-eminent brief writer John Dragseth.

Fredrikson & Byron PA

The deployment of increasingly advanced technological tools – such as one that precisely measures the relative allowance rate of different examiners and assesses the impact thereon of interviews – has allowed Fredrikson & Byron to become much more strategic in its patenting activities. A sweet spot is assisting medium-sized entities that lack in-house IP resources; the lawyers here combine to fill the chief patent counsel role, practising from a vantage point that gives them a 360-degree understanding clients’ products and businesses. Thomas Hipkins runs the patent group like a well-oiled machine and has become an adroit manager in recent years; if there are sticking points getting in the way of efficient operation, he clears them right up. Another big prep and pros guy, Charles Segelbaum is a perfect fit for those with tight budgets, thanks to his ability to motivate and get the best out of lower-cost patent agents. Segelbaum is also a lynchpin of one of Minnesota’s best transactional IP practices in the technology and life sciences spaces. He, Ann Ladd and David West have a flair for negotiating deals with highly complex structures. Ladd understands the healthcare ecosystem and has the roadmap to successful collaboration; likewise West in the medical device and software arenas. Patrons are also well served when there are lawsuits to be filed or defended. Kurt Niederluecke, Grant Fairbairn and Lora Friedemann are never fazed, whether they are facing the most technically dense material or taking on an industry leader. Niederluecke is a first-chair trial lawyer who has been landing ever-bigger cases; he is a valuable mentor within the team, too. Heading the IP litigation group, Fairbairn has fought and won important patent, licensing and trade secret cases across the country. Friedemann has a close relationship with the bench and presents with great credibility in patent and trademark suits.

Greenberg Traurig LLP

Capitalising on the tremendous amount of R&D and innovation going on in Minnesota, Greenberg Traurig has expanded the reach of its patent practice to Minneapolis, opening a new office there in February 2019. Things really took off, however, when Alexander Kim came on board from Hamre, Schumann, Mueller & Larson in September that year; he is thriving in his new high-tech and resource-rich environment, honing ways to leverage rich analytic data and enhance efficiency in global prosecution and portfolio development. Kim works with dominant Korean multinationals, universities in Australia, European industrial conglomerates and more, delivering a cost-competitive but high-quality and personal service.

Merchant & Gould

Storied boutique Merchant & Gould is “extremely strong as a full-scope IP service provider”. On the patent side, its deep bench of technical specialists across six offices caters to innovators in all major industries; while its contentious experts “put up tough but fair fights” when infringement accusations arise. One of those litigators is Minneapolis-based Rachel Hughey, “a former Federal Circuit law clerk with a sharp mind” who is “extremely engaged in the local IP community”.

Patterson Thuente IP

Patterson Thuente IP provides an efficient and precise IP and legal service, but goes above and beyond to meaningfully support clients’ business development. Extremely well founded from a technical perspective, the set conducts itself admirably on the international patent stage, showcasing a talent for getting patents granted wherever they are needed. At the forefront of the practice is AIPLA board member Brad Pedersen, the only lawyer in Minnesota to be recommended on each of the IAM Patent 1000’s prosecution, litigation and transactions tables. Inventors, business executives and in-house counsel all find him easy to communicate with and relate to, because he is one of them – he knows their challenges and how best to find the right solutions to them. Similarly versatile, James Patterson is especially valued for his strategic oversight and brings 30 years of experience to every engagement. Prosecution maestro Amy Salmela is popular overseas, particularly among European companies. Thanks to the in-house experience on her résumé, she has a fundamental understanding of patents as business assets.

Robins Kaplan LLP 

Potent contentious force Robins Kaplan has what it takes to emerge victorious from courtroom battles and its many savvy trial lawyers do so time and again in commercially consequential patent disputes. A look under the hood reveals a seriously sophisticated practice: the firm’s OneBudget proprietary software program makes light work of the management of complex legal projects; while dedicated in-house electronic discovery smooths the litigation process and facilitates smart business decision making. Exceptional leadership is provided by many, including executive board chair Ronald J Schutz, health and life sciences captain Jake M Holdreith, post-grant chair Cyrus A Morton, IP and technology litigation group head Christopher K Larus and global business and technology sourcing disputes helmsman Christopher A Seidl; all are seasoned trial vets with abundant narrative gifts and compelling powers of persuasion. Special praise this year goes to Holdreith, a “personable, pragmatic, efficient and reliable lawyer who does a wonderful job distilling down complex issues and giving straightforward advice”, while remaining “even-keeled in heated, antagonistic court settings”. Larus and Patrick M Arenz are also commended: Larus as a senior lead counsel who not only “knows how to tell a good story”, but “stays on top of all aspects of his cases”; and Arenz as an “excellent, thorough and focused cross-examiner”. Not satisfied with standard setting in the litigation field in Minnesota, Robins Kaplan also acquits itself with distinction in licensing and IP monetisation – subjects that Larus knows a great deal about.

Schwegman Lundberg & Woessner 

Securing ironclad protection for cutting-edge technology is Schwegman Lundberg & Woessner’s raison d’être. The firm fulfils this mission in some style: it is “outstanding in terms of patent quality” and one of just 16 names to make the IAM Patent 1000 US national table for prosecution. Sources highlight its “agility and flexible structure”, noting that it “helps it attract and retain top-notch talent”; its nimbleness also plays into its success in developing proprietary tools that drive efficiency and reduce costs, while minimising the risk of errors. Recent developments for the group include increased technological innovation on the portfolio management front and expanded international patent activities, particularly in Europe and China. There are plenty of “excellent strategic thinkers” in its line-up, but worthy of special mention are eminent post-grant mind Timothy E Bianchi; software authorities Micheal L Schwegman and Steven W Lundberg; pharmaceutical and biotechnology ace Warren Woessner; and materials and mechanics pro Bradley Forrest.

Seager Tufte & Wickhem LLP

Accomplished patent counselling shop Seager Tufte & Wickhem has the magic touch when it comes to prosecuting patent applications through to successful grant at the USPTO. It also knows how to coalesce patent rights into portfolios that help drive business value. No matter what technology needs protecting, there’s a technical specialist here fit for the occasion: Glenn Seager shines in the medical device field; Brian Tufte stands ready for electronics briefs; Scot Wickhem is the top chemical expert on deck; and Steven McAuley is the preferred choice of pharmaceutical and biotechnology innovators. The experience that these practitioners bring to the table is impressive: Tufte served as an electrical engineer in industry, Wickhem as an inorganic chemistry researcher and McAuley as chief patent counsel of Boston Scientific’s cardiology divisions.

Shumaker & Sieffert PA

“Shumaker & Sieffert is a good firm to benchmark yourself against in the patent area. It’s brilliant in prosecution, with robust and well-designed systems for handling a high volume of filings. It has good training protocols in place, too.” Steven Shumaker and Kent Sieffert –both connoisseurs of electrical and software technologies – are the architects of this well-calibrated practice. Former 3M IP counsel and Fish & Richardson principal Sanders Gwin is distinguished by his chemical and materials expertise. For a master in the mechanical arts, look to Jessica Rauckman, a responsive, diligent and proactive attorney who is fast becoming a leader at the set.

Other recommended experts

Now a partner at Norton Rose Fulbright, ex-Barnes & Thornburg lawyer Felicia Boyd continues to operate sophisticatedly in complex IP litigation. She works artfully across industries and IP categories both in court and in alternative dispute resolution forums. DeWitt upped its trial capabilities by hiring Eric Chadwick in September 2019; the former Patterson Thuente IP partner is a practised IP and commercial litigator. Mark Hollingsworth recently took his talents to Mueting Raasch & Gebhardt, a firm at which he practised for two years between 1998 and 2000. Formerly an industrial electrical engineer, he speaks the same language as inventors, which facilitates uncomplicated patenting. At Barnes & Thornburg, chemistry expert Scott Rothenberger and inventor and medical device buff Jeffrey Stone covers a lot of ground for patent owners with their strategic patent counselling, prosecution, portfolio development and transactional skillsets.

Individuals: litigation

Individuals: prosecution

Individuals: transactions