Charles D. Segelbaum
Assistant: Debra Bruck, 612.492.7521
“I develop creative approaches to acquiring and protecting intellectual property—recognizing my clients’ need to understand how and when the desired results will be delivered. In co-developing a customized strategy, we clarify and confirm accountabilities upfront. Then we design a plan to achieve the client’s short- and long-term objectives, ensuring the full range of risks is factored into the solution.”
With a background in electrical and mechanical engineering and 18 years of business-focused legal experience, Chuck advises clients on patent due diligence, litigation, preparation, and clearance matters that hinge on understanding of complex technology.
In order to provide effective counsel, Chuck gains insight into clients’ objectives, business activities and operating environments in conjunction with performing patent analysis and conducting IP-related assessments. From this vantage point, he provides straightforward feedback and business-centric advice in his areas of specialization.
As chair of the firm’s IP Due Diligence Group, co-chair of its Artificial Intelligence Group and former chair of the Patents Group, a position he held for eight years, Chuck has helped advance initiatives in the areas of process uniformity and fee predictability. He is committing to ensuring clients receive the best value for their legal expenditures.
Prior to practicing law, Chuck was a data network engineer and project manager for the Federal Reserve Systems’ national data communications network.
Chuck is registered to practice before the U.S. Patent and Trademark Office. His practice also includes trademarks, copyrights, trade secrets and unfair competition.
Intellectual Property Due Diligence
Chuck recognizes that businesses seeking to acquire technology need counsel to inform the deal, not obstruct it. With this in mind, he works closely with clients’ business people to understand objectives of the transaction and ensure all IP and patent issues are identified and resolved before the deal is completed.
When IP-related issues are uncovered, Chuck provides context to help clients accurately value the deal and structure it in a manner that accounts for the full range of risks. In some cases, he advises deal terms that provide for indemnification should risks materialize.
In helping clients optimize the value of their IP transactions—and manage associated risks—Chuck undertakes the following activities:
- Quality assessments. Assesses coverage of acquisition target’s patents to determine relative value for client. Informs client of any relevant non-covered designs not included in purchase. Identifies drafting issues with respect to the patent or its prosecution that may impact scope and potential enforcement issues. Ensures clients understand implications of scope, validity and enforceability findings as baseline for negotiating deal terms and developing alternative solutions. Provides guidance on overall soundness of deal with respect to price and alignment with objectives.
- Infringement risk assessments. Helps clients understand their competitive position and evaluate options with respect to potential infringement issues, including immediate threats. Provides analysis for identification and evaluation of potential IP risks, including litigious competitors and “picket fences” surrounding core technology. Helps ensure deal terms reflect risk landscape, including potential for claims by competitors. Recommends prudent risk-mitigation measures. Provides written clearance opinions as needed.
- Identification of IP assets. Seeks to identify problems concerning intellectual property to be acquired. Considers issues related property itself, including status of government filings to protect the property, as well as issues related to ownership, gaps in chain of title and conflicting rights held by other third parties.
Effective patent litigation depends on the ability to understand complex technology within the context of an infringement claim—and communicate the relevant detail in a plain and concise manner.
To assist patent litigators in representing Fredrikson clients, Chuck draws on his background in electrical and mechanical engineering to analyze in-question technologies and provide “bottom-line” findings with respect to patent infringement and validity.
Patent Preparation and Prosecution
Chuck’s goal is to ensure clients obtain patents that fully cover the in-scope technology and devices—and add value to the business.
He assists companies in preparing and prosecuting patents for highly complex technologies, including sensors and controls; thermal imagers; cleaning and sanitation processes; and vehicles such as snowmobiles and ATVs, radio-controlled aircraft, and floor-maintenance machines.
He also has extensive experience with medical devices, including implantable pacemakers, defibrillators, neurological stimulators, diagnostics software and systems, cryogenic probes, surgical heating blankets and surgical patient positioning devices.
In addition to analyzing the nature and novel features of each technology, Chuck looks at issues of marketability and alignment with the client’s objectives. If he determines that seeking a patent will not further his client’s interests, he may recommend strategic alternatives for consideration.
Areas he considers in advising clients include:
- Overall value and patentability of technologies and devices
- Alignment of patent coverage with company’s business objectives
- Unappreciated patent opportunities within the client’s technology universe, including inventions, R&D work and emerging technologies (e.g., artificial intelligence, machine learning, blockchain and related technologies)
To support efficiency and cost containment in this area, Chuck employs both project and process management methodologies. Benefits for clients include transparency on scope of work, ownership of key tasks and project-related billings. In addition, use of Fredrikson & Byron’s customized technology tools supports quality assurance—promoting consistency in the application process, mitigating potential surprises and keeping the project on track with deadlines.
Chuck may also recommend that clients execute certain processes on an in-house basis and assists as need in training personnel.
Freedom to Operate and Patent Clearance
Chuck helps companies evaluate their rights to commercialize protected technology and make prudent decisions with respect to infringement-related risks. His goal is to ensure clients’ product development and marketing activities move forward unimpeded.
When necessary, he drafts freedom to operate opinions, allowing clients to confidently move ahead on planned product/service offerings.
Within the constructs of his clients’ objectives and the relevant fields, Chuck conducts clearance research to identify potential obstacles, i.e., third-party patents, to planned business activities.
When infringement is likely on the current course, Chuck works collaboratively with companies to develop alternative strategies—providing counsel on available licensing opportunities, as well as exploring options for product redesign or dispute of patent validity.
Honors & Education
- Loyola University Chicago School of Law, J.D., 1996, magna cum laude
- University of Wisconsin-Madison, B.S., Electrical Engineering with an emphasis in analog and digital communications, 1990
- Minnesota, 1996
- U.S. District Court for the District of Minnesota, 1997
- U.S. Patent and Trademark Office, 1998
- Listed in IAM Patent 1000: The World’s Leading Patent Professionals, 2015-2019
- Managing Intellectual Property IP Star, 2016
- The National Law Journal, Twin Cities Legal Departments of the Year, Counsel-to-Counsel Award Winner, 2015
- Intellectual Asset Management’s Patent 1000, Recommended Attorney for Patent Prosecution, 2013
- Loyola University Chicago Community Law Center, C.A.L.I. Excellence for the Future Award for pro bono work
- City of Golden Valley, Planning Commission, 2012-Present; Chair, 2015-Present
- City of Golden Valley, Board of Zoning Appeals, 2008-2012; Chair, 2010-2012
- American Intellectual Property Law Association
- Minnesota Intellectual Property Law Association
- Minnesota State Bar Association