Thomas R. Hipkins

Shareholder

Email: thipkins@fredlaw.com
Office: 612.492.7307
Assistant: Anise Krull, 612.492.7635

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PRIMARY SERVICES

Patents IP Due Diligence Mergers & Acquisitions Intellectual Property

Overview

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:

What is the value of capturing freedom to practice assessments in formal opinions of counsel?

What should a company do to assess patent infringement risk before introducing a new product?

Experience

REPRESENTATIVE EXPERIENCE

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

Software

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

Cleantech

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

By Thomas R. Hipkins

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.

Invalidity Opinions of Counsel After Commil

June 30, 2015

By Thomas R. Hipkins

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.

Patent Exhaustion of Method Claims - Clarifying the Rights of the Patent Owner

January 21, 2014

By Eric D. Buss & Thomas R. Hipkins

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.

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

EDUCATION

University of Minnesota Law School, J.D., 2003, magna cum laude
Minnesota State University, Mankato, B.S. Mechanical Engineering, 2000, cum laude

BAR ADMISSIONS

Minnesota, 2003
U.S. District Court for the District of Minnesota
U.S. Patent & Trademark Office

HONORS

Listed in IAM Patent 1000: The World’s Leading Patent Professionals, 2015-2018
Minnesota Law Review, Managing Editor, 2002-2003; staff member, 2001-2002

Professional Activities

PROFESSIONAL ACTIVITIES

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

COMMUNITY

Board of Directors, Liberty Classical Academy, 2009-2012
Board of Directors, Twin Cities Christian Legal Aid, 2005-2009