Adam R. Steinert
Assistant: Katheryn Hanson, 612.492.7651
Adam quoted in Sun Sailor on representing a Minnesota inventor in patent litigation against Microsoft.
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.
- Adam represents 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 represents a small software developer in litigation against Microsoft in the District of Minnesota.
- Adam represents a leading manufacturer of medical infusion pumps in litigation against Baxter in the Northern District of Illinois.
- 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.
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.
Articles & Presentations
Supreme Court Upholds Constitutionality of Inter Partes Review - PTAB Must Decide Patentability of All Challenged Claims
April 24, 2018
The Supreme Court of the United States issued a pair of significant decisions today regarding post-grant practice before the PTO’s Patent Trial and Appeal Board.Read More
Patent Trial and Appeal Board Creates Loophole to Challenge Written Description and Enablement in Older Patent Families
June 15, 2017
The Patent Trial and Appeal Board’s May 10 decision in Minerva Surgical, Inc. v. Hologic, Inc. creates a loophole in Patent Office post-grant practice that enables challengers to bring new kinds of invalidity attacks against patents claiming priority to older applications.Read More
May 22, 2017
The U.S. Supreme Court’s May 22, 2017, decision in TC Heartland LLC v. Kraft Foods Group redefined the possible venues for patent infringement lawsuits.Read More
May 12, 2017
In Helsinn Healthcare, S.A., v. Teva Pharmaceuticals USA, Inc., the U.S. Court of Appeals for the Federal Circuit addressed the degree to which the Leahy-Smith America Invents Act of 2011 (AIA) altered the “on sale” prior art provision of 35 U.S.C. § 102.Read More
January 12, 2017
On January 9, 2017, the U.S. Court of Appeals for the Federal Circuit issued its decision in Phigenix, Inc. v. ImmunoGen, Inc. (Case No. 2016-1544), severely limiting the appellate rights of petitioners in America Invents Act proceedings that do not engage in potentially infringing activities.Read More
May 11, 2016
On May 11, 2016, President Obama signed the Defend Trade Secrets Act (DTSA) into law, creating a new federal cause of action for trade secret misappropriation. Previously, all trade secret claims had to be brought under state law (either under a state’s Uniform Trade Secrets Act or under common law). The new federal trade secret law has some notable features that will make it a useful tool for protecting innovation, especially for those industries where patent protection may be hard to obtain under the Supreme Court’s recent Mayo and Alice decisions.Read More
District Court in Octane Fitness Remand Awards Majority of Requested Attorneys’ Fees Under Section 285
September 11, 2015
In a lawsuit that redefined the standard for an exceptional case under 35 U.S.C. § 285, the District Court awarded defendant Octane Fitness $1,778,030 in fees and costs. The District Court initially denied Octane Fitness’ motion for fees. But after the Supreme Court redefined the standard on appeal, reversed and remanded the case (Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S. Ct. 1749 (2014)), the District Court found the case exceptional under the new standard.Read More
District of Minnesota Holds that Mayo, Myriad, and Alice Apply to Dog-Eat-Dog World of Canine Genetic Testing
May 19, 2015
On March 31 in Genetic Veterinary Sciences, Inc., d/b/a Paw Print Genetics v. Canine EIC Genetics, LLC, No. 14-CV-1598 (JRT/JJK), Judge John R. Tunheim addressed the question of whether veterinarians can obtain patents for identifying genetic markers of canine disease. Not surprisingly, the court held that the Supreme Court’s recent decisions regarding unpatentable subject matter (Mayo Collaborative Servs. v. Prometheus Labs; Ass’n for Molecular Pathology v. Myriad Genetics, Inc.; and Alice Corp. Pty. Ltd. v. CLS Bank Int’l) apply equally to all forms of medicine, even if the patient is a dog. Because the patent claims simply identified a natural law, Judge Tunheim found them invalid.Read More
June 1, 2013
A new Vermont state law set to go into effect on July 1, 2013, creates penalties for “bad faith assertions of patent infringement.”Read More
PUBLICATIONS & PRESENTATIONS
- Panelist, “Panel on Best Practices in Trade Secret Litigation,” Minnesota Chapter Federal Bar Association, April 17, 2018
- Presenter, “The Year in Review for Minnesota IP Litigation,” MIPLA Stampede, June 2016
- Speaker, “2015 MIPLA Stampede: Post-Grant Strategies for Attacking & Defending Issued Patents,” co-presented with Kurt Niederluecke, May 18, 2015
- Speaker, “Recent Decisions in IP Licensing,” Midwest IP Institute, December 3, 2014
Honors & Education
- New York University School of Law, J.D., 2004
- Harvard College, A.B., Physics, 2001, cum laude
- Minnesota, 2009
- New York, 2005
- U.S. District Courts for the Southern and Eastern Districts 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
- Minnesota Super Lawyers, Rising Star – Intellectual Property Litigation, 2016-2017
- Judicial Intern, Judge Naomi Reice Buchwald, United States District Court for the Southern District of New York, Summer 2002
- Federal Bar Association, Minnesota Chapter
- American Intellectual Property Law Association
- N.Y.U. Journal of International Law & Politics, Managing Editor, 2003 – 2004