In recent remarks at the Intellectual Property Owners Association’s annual meeting, USPTO Director Andrei Iancu proposed a change to how USPTO examiners determine whether a claimed invention satisfies the patent eligibility requirements of 35 USC § 101.
Tom is the chair of the firm’s Patents Group. He helps technology-driven clients minimize patent infringement risk by developing noninfringement and invalidity positions with respect to their competitors’ patents, while also helping protect and leverage their own technology.
Tom’s clients come to him with complex freedom-to-operate issues. He works with them to stake out noninfringement and/or invalidity positions. When circumstances warrant, he documents those positions in clear, concise written opinions.
Tom also helps protect his clients’ technology by drafting and prosecuting patent applications. His clients value his detailed understanding of their machines, mechanical and electro-mechanical devices, software, and manufacturing processes, as well as his skillful approach to working with patent examiners to move applications through to allowance.
When Tom’s clients want to leverage their patents, he assesses the likelihood of the relevant competitor’s product or process being covered by the client’s patents and then helps devise and implement an enforcement strategy.
Tom enjoys working closely with his clients to formulate comprehensive patent strategies that best advance their business objectives. His clients view him as a trusted counselor and appreciate his creativity and knowledge of the law in dealing with their wide variety of issues.
Learn More About Patent Law:
Machines and Mechanical/Electro-Mechanical Devices
- Contrast injection systems for cardiology and radiology
- Personal protective equipment—helmets, respiration units, ear protection, eyewear, gloves, harnesses, footwear, etc.
- Transcatheter heart valves
- MEMS piezoresitive pressure sensors and pressure transducers
- Limb enclosures for increasing blood flow via particular negative pressure pulses
- Oxidation ovens and infrared furnaces
- Equipment for coating eyeglass lenses
- Injection molding equipment
- Equipment for making insulating glass units
- Subcutaneous heart monitors
- Imaging the interior of blood vessels via ultrasound
- Networks involving a thermostat, a utility and a remote server
- Automatically assigning addresses to components in a network
- Generating three-dimensional images of tissue based on tissue elasticity measurements
- Networks involving an implanted medical device, a programmer and a remote server
- Monitoring the battery longevity of an implanted medical device
- Determining respiration patterns based on the flow rate of air into and out of the patient’s lungs and changes in the patient’s lung volume
- Estimating bone mass density via ultrasound
- Mapping routes based on user-specified parameters
- Determining respiration patterns based on electromagnetic induction between a patient conductor loop and a remote conductor loop
- Enterprise resource planning applications
- LED replacement lighting
- Biomass fractionation
- High-efficiency HVAC equipment
- Heat transfer modules for optimizing ethanol plant operation
Articles & Presentations
Avoiding Punitive Damages in Patent Infringement Cases: Staying on the Right Side of the Now-Blurred Line
September 19, 2016
The United States Supreme Court’s recent Halo Electronics v. Pulse Electronics case made it easier for a patent holder to win punitive damages in a patent infringement case.
June 30, 2015
Despite the Supreme Court’s recent Commil USA, LLC v. Cisco Systems, Inc. decision, invalidity opinions of counsel remain an important tool for mitigating patent infringement risk. Under Commil, invalidity opinions cannot be used to show that an accused infringer lacked the requisite intent to induce—i.e., the scienter element—under 35 USC § 271(b). But companies will continue to use the opinions to memorialize early-stage validity analyses as part of a broader strategy of assessing potential patent infringement risk.
January 21, 2014
What if someone sold you a product and then sued you for patent infringement because you used the product for its intended purpose? The doctrine of patent exhaustion guards against such a situation, and the Federal Circuit recently made an important clarification of that doctrine.
PUBLICATIONS & PRESENTATIONS
- Presenter, “Inside Minnesota IP: Meet the Inventors, Artists and Entrepreneurs,” Midwest IP Institute, September 28, 2018
- Presenter, “Managing Patent Infringement Risk in Product Development,” Clear Law Institute, July 24, 2018
- “The Post-Halo Shift from Willfulness to Read,” IP Litigator, Volume 24, Number 1, January/February 2018
- Co-Presenter, “Managing Patent Infringement Risk in Product Development,” Strafford Webinar, February 22, 2018
- Presenter, “How to Manage Patent Infringement Risk in Product Development Post-Halo,” Midwest IP Institute, September 28-29, 2017
- “Kimble v. Marvel Entertainment, LLC: Royalty Payments After Patent Term Expiration,” chapter co-author with Ryan Spanheimer, The IP Book, 2015
- “A Rebuttable Presumption of Dedication: Protecting the Hard-Luck Patentee from Johnson & Johnston’s Dedication Rule,” 87 Minn. L. Rev. 779 (2003)
Honors & Education
- University of Minnesota Law School, J.D., 2003, magna cum laude
- Minnesota State University, Mankato, B.S. Mechanical Engineering, 2000, cum laude
- Minnesota, 2003
- U.S. District Court for the District of Minnesota
- U.S. Patent & Trademark Office
- Listed in IAM Patent 1000: The World’s Leading Patent Professionals, 2015-2019
- Minnesota Law Review, Managing Editor, 2002-2003; staff member, 2001-2002
- Planning Committee Member, Midwest Intellectual Property Institute
- Honorable Jimmie V. Reyna Intellectual Property American Inn of Court
- Minnesota Intellectual Property Law Association
- Committee Member, U.S. Patent Law Committee, Intellectual Property Owners Association
- American Intellectual Property Law Association
- Minnesota American Indian Bar Association
- Board of Directors, Liberty Classical Academy, 2009-2012
- Board of Directors, Twin Cities Christian Legal Aid, 2005-2009