Overview

Great ideas often fuel great innovations. Over time, those innovations frequently turn into profitable businesses – helping drive overall prosperity and job growth. It is vitally important to protect your company’s confidential information and intellectual property when competitors threaten to misuse it. 

At Fredrikson & Byron, our philosophy for protecting intellectual property is simple. Instead of preparing every case as if it will settle, we prepare cases to go to trial. Backed by the largest intellectual property practice of any full-service law firm in Minnesota, our attorneys have the resources to help clients manage intellectual property disputes, including patents, trademarks, copyrights, and trade secrets. Our team has a proven track record of litigating complex cases in federal, state, and appellate courts. We have also stopped foreign companies from infringing on the patent rights of our U.S.-based clients. Over the years, we have built long-term relationships with many of our clients, largely because we place a high value on approachability, responsiveness, and superior client service.

Services

Our Intellectual Property Litigation practice group offers a comprehensive range of services, including:

• Patent litigation. We excel at bringing complex concepts to life for judges and juries, often drawing upon the unique skills and technical expertise of our patent practitioners. We have handled patent cases in virtually every industry and business sector and have engaged in all aspects of patent litigation, from pre-litigation counseling through trial and appeal.
• Trademark litigation. Our attorneys have substantial experience in trademark, trade dress, false advertising and domain name disputes. We also handle matters before the Trademark Trial and Appeal Board, opposing or seeking to cancel the registration of trademarks confusingly similar to those of our clients, and defending against similar claims. We have handled more than 80 TTAB cases during the last three years.
• Copyright litigation. Our group’s extensive copyright litigation experience spans publishing, architecture, arts & entertainment, software, and more.
• Trade secret litigation. Our IP litigators work across a variety of industries on cases involving trade and technological secrets, non-competes, formulas and manufacturing, marketing secrets, and other critical business information.

Representative Matters

Patents. In November 2008, we successfully defended a patent infringement lawsuit filed by a well known plaintiffs’ contingency fee firm. The plaintiffs filed in the Eastern District of Texas “rocket docket” and sought $65 million in damages from our client. We achieved a favorable jury verdict which led to a favorable settlement.

In October 2009, we tried a patent infringement case brought against our client, a manufacturer of hematology controls, in the District of Nebraska. The team knocked down plaintiff's damages claim to less than $100,000, and obtained a jury finding of no willful infringement. Days later, in a separate, parallel proceeding, the Patent Board granted our motion for judgment that our client was the first to invent the subject matter, turning the tables on the plaintiff - effectively invalidating the plaintiffs' patents and placing those patent rights in our clients’ hands.

We brought a patent infringement lawsuit in the District of Minnesota against a foreign competitor and its United States distributor for infringement of a patent covering an agricultural heating device. Our team successfully defended against an attempt to move the case to the distributor’s home state and forced the competitor and distributor to cease selling the accused product.

In June of 2007, we successfully tried a patent infringement case brought by our client, a concrete block design and licensing company, in the District Court in Minnesota. The defendant was a former licensee who attempted to design around the patents at issue. We successfully obtained a preliminary injunction in 2006 that was affirmed by the Court of Appeals for the Federal Circuit while the case was proceeding to trial. The jury found both breach of contract and willful patent infringement. The verdict was affirmed by the Court of Appeals for the Federal Circuit.

From 2005 to 2009, we represented a manufacturer of pharmaceutical drugs and nutritional supplements in six separate lawsuits for infringement of combinations of fourteen different United States patents. The first case, against a Colombian importer, resulted in a settlement and agreement not to import the product into the United States. The second case, against a Chinese importer, resulted in judgment of patent validity and an injunction against future importation. The third lawsuit against a domestic producer resulted in a settlement and acquisition of trademark rights from the defendant. The fourth lawsuit, against a Brazilian importer, resulted in the defendant stopping importation until patent expiration, and ultimately, settled. The fifth lawsuit, against a Norwegian importer and US subsidiary, settled shortly before trial. The sixth lawsuit, against a domestic producer, settled on the day before the trial was scheduled to start.

In November 2009, we settled a patent infringement case for a publicly-traded medical device company. We asserted the client’s patents against the only other competitor in the market, a substantially larger corporation.

Trademark. We helped our client, Buffalo Wild Wings, enforce its house mark against a restaurant operating under the name “Buffalo Trace Wild Wings.” When letters to the restaurant went unanswered, we filed a trademark infringement lawsuit in the Eastern District of Kentucky seeking an injunction and money damages. The defendant quickly stopped the infringement and agreed to pay a confidential sum.

We achieved a court order to shut down a website misdirecting Internet traffic to a competitor’s website through “typo-squatting.”

We represented a destination resort development in more than fifteen TTAB opposition cases against a hotel chain. We were able to negotiate a very favorable settlement that allowed our client to continue using its name.

We represented a board game company against another toy manufacturer with a similar name. The other company brought an opposition proceeding and we counterclaimed with a cancellation proceeding. After more than three years, we achieved a settlement that allowed the client’s mark to proceed to registration.

We represented a medical device maker in an opposition dispute with another medical device maker. The parties resolved their differences by agreeing to market their products in certain geographic areas, and the parties began exploring whether one party could acquire the other.

Copyright. Our client was threatened with a lawsuit claiming $200 million in damages due to alleged infringement of copyrights relating to back-to-back town homes. We defended the case through trial and appeal. The jury found no infringement and awarded a verdict on behalf of our client. We achieved a favorable settlement after the Court of Appeals remanded the case for a new trial.

Internet issues. While freedom of expression is a hallmark of our nation, free speech has limits. A corporate client found objectionable postings about the company’s stock on an Internet Service Provider (ISP) message board. The anonymous postings disparaged the corporation’s products, defamed corporate executives, and misused corporate trademarks – all of which may have affected the price of the corporation’s stock. We initiated “John Doe” lawsuits, which allowed us to subpoena identifying information from the ISP to track down the authors of the message board material. Once their identities were discovered, we were able to end the objectionable postings.

Bios

Primary Attorneys

Grant D. Fairbairn
Lora Mitchell Friedemann, Chair
Ted C. Koshiol
James R. Mayer
Sarah C.S. McLaren
Cynthia A. Moyer
Laura L. Myers
Kurt J. Niederluecke
Darren B. Schwiebert
Charles D. Segelbaum

Supporting Attorneys

Caroline G. Chicoine
Kara K. Fairbairn
S. Jamal Faleel
Matthew J.S. Graham
Thomas R. Hipkins
Dean R. Karau
Keri A. McWilliams
Carrie L. Rosenberry
David C. West

Other Professionals

Chelsea L. Sommers