Adam R. Steinert

Adam tries patent and trade secret cases on behalf of inventors and corporate clients, enforcing and defending his clients’ intellectual property in a wide range of technologies, from software and semiconductors to medical devices.

In addition to practicing in Minnesota, Adam appears regularly in the top national venues for patent litigation, including Texas, Delaware, New York, New Jersey, California, Virginia and before the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB). Adam takes a business-oriented approach to litigation, utilizing the full array of available tools—including parallel Patent Office review proceedings and alternative dispute resolution (ADR)—to deliver cost-effective business solutions to his clients’ IP issues. Adam also advises clients on transactional IP matters, including licensing, inventor agreements and IP due diligence.

Patent Litigation

• Adam represents a leading manufacturer of medical infusion pumps in litigation against Baxter in the Northern District of Illinois, the Central District of California, and before the Patent Trial and Appeal Board.
• Adam represents a leading manufacturer of industrial floor cleaning devices in litigation against a non-practicing entity in the District of Minnesota and before the Patent Trial and Appeal Board.
• Adam represented a leading manufacturer of wireless intercom systems in litigation against 3M in the District of Minnesota and before the Patent Trial and Appeal Board.
• Adam represented a small software developer in litigation against Microsoft in the District of Minnesota.
• Adam represents a leading manufacturer of automotive paint protection film products in litigation against 3M in the District of Minnesota.
• Adam and his team successfully defended two leading producers of dynamically-created marketing videos against a patent suit filed by one of their primary competitors in the Northern District of Texas. Adam and his team successfully obtained Patent Office reexamination of both patents asserted in the lawsuit, which they leveraged to obtain a very favorable settlement for Adam’s clients.
• Adam and his team successfully defended a leading designer and manufacturer of ergonomic furniture in litigation in the Eastern District of Virginia related to multi-monitor display stands.
• Adam was a member of a trial team that successfully represented a leading manufacturer of automated external defibrillators (AEDs) against one of its primary competitors in the District of Minnesota. The case involved a total of 21 patents, covering the fundamental technology in the field. Adam succeeded in invalidating his opponent’s most valuable patents, while simultaneously preventing his opponent from using the same evidence against his client’s own patents. Adam also obtained key deposition testimony that destroyed the credibility of his opponent’s expert witnesses. As a result of these and other victories, the case settled at the start of trial on terms favorable to Adam’s client.
• Adam was a member of a team that successfully defended a leading manufacturer of endoscopic surgical devices in litigation before the U.S. International Trade Commission. Adam uncovered evidence of serious misconduct in the prosecution of the plaintiff’s patent, which his opponent had referred to as “the patent that companies are bought and sold over.” After Adam and his team confirmed the prosecution misconduct through deposition testimony, the case settled on terms very favorable to Adam’s client.
• Adam was a member of a team that successfully defended a leading manufacturer of high-intensity white light-emitting diodes (LEDs) in the Eastern District of Texas. Adam and his team successfully petitioned the Patent and Trademark Office to reexamine the patent asserted against his client as a result of errors made in the original patent prosecution. Adam and his team also convinced the court to disqualify the opposing counsel and to transfer the case from Texas to California. As a result of these victories, the case settled on terms very favorable to Adam’s client.

Trade Secret Litigation

• Adam was a member of a trial team that successfully represented a leading research hospital in litigation against a former employee over trade secret misappropriation, breach of contract and software copyright ownership in the District of Minnesota. The judge ruled as a matter of law that Adam’s client was the sole owner of all rights in the disputed software, which performs natural language processing of medical records. The jury found that the former employee had willfully and maliciously misappropriated Adam’s client’s trade secrets by taking the source code for the software to his new employer.

Pro Bono

• Adam represents a gay Jamaican man seeking asylum to avoid violent discrimination based on his sexual orientation.
• Adam represented two Somali brothers seeking asylum to avoid violent discrimination based on their clan affiliation and status as non-marital children.
• Adam was part of a team that defended an impoverished federal criminal defendant pursuant to the Criminal Justice Act. Adam successfully argued that the full facts of the case and his client’s demonstrated remorse merited a reduced sentence.

Education

• New York University School of Law, J.D., 2004
• Harvard College, A.B., Physics, 2001, cum laude

Admissions

• Minnesota, 2009
• New York, 2005
• U.S. District Court for the Northern District of Illinois, 2016
• U.S. District Court for the Eastern District of New York, 2005
• U.S. District Court for the Southern District of New York, 2005
• U.S. Court of Appeals for the Federal Circuit, 2005
• U.S. District Court for the District of Minnesota, 2009
• U.S. Court of Appeals for the Eighth Circuit, 2011

Clerkships

• Judicial Intern, Honorable Naomi Reice Buchwald, United States District Court for the Southern District of New York, Summer 2002

Languages

• North Star Lawyer, Minnesota State Bar Association, 2021
• Minnesota Super Lawyers Rising Star, Intellectual Property Litigation, 2016-2019

Professional Activities

• Federal Bar Association, Minnesota Chapter
• American Intellectual Property Law Association
• N.Y.U. Journal of International Law & Politics, Managing Editor, 2003 – 2004