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Backed by one of the largest IP practices in the upper Midwest, we have tried and won lawsuits involving critical patents, trademarks, copyrights, licensing agreements and trade secrets.
From dispute advice to complex litigation, our team understands our clients’ business objectives and works to meet them by providing a range of services, including:
Our team is trained in legal project management. We use communication and budget tools to ensure that we meet our clients’ expectations. The result of applying these tools and techniques to our practice includes predictable budgeting and a custom communication plan to meet each client’s preferences.
June 17, 2019
Attorneys Grant D. Fairbairn, Lora Friedemann, Thomas R. Hipkins, Ann M. Ladd, Kurt J. Niederluecke, Charles D. Segelbaum and David C. West were featured in the 2019 edition of the IAM Patent 1000: The World’s Leading Patent Professionals.
May 7, 2019
Instagram and other social media platforms have become fertile ground for all manner of intellectual property disputes.
March 25, 2019
Brand owners recently gained a new weapon for their arsenal in the ongoing fight against counterfeit products sold on online marketplace giant Amazon.com.
February 4, 2019
Fredrikson & Byron shareholders Lora Friedemann, Cynthia A. Moyer, John C. Pickerill and Ann Dunn Wessberg have been named to the 2019 World Trademark Review 1000 (WTR 1000) for Minnesota.
December 14, 2018
In the face of the nagging problem of fake products posing as genuine goods in online marketplaces, major e-commerce platforms are continuing to refine their strategies to address counterfeiting.
September 25, 2018
Three new judges have recently joined the Minnesota federal bench, returning the District of Minnesota to full strength for the first time in more than two years.
July 20, 2018
By Adam R. Steinert & Katherine J. Rahlin
The United States Court of Appeals for the Federal Circuit held today that a Native American tribe may not assert sovereign immunity to bar inter partes review proceedings before the Patent and Trademark Office’s Patent Trial and Appeal Board.
June 14, 2018
Lora Friedemann, Thomas R. Hipkins, Ann M. Ladd, Kurt J. Niederluecke, Charles D. Segelbaum and David C. West were featured in the 2018 edition of the IAM Patent 1000.
May 1, 2018
By Eric J. Snustad & David C. West
No matter how much IP experience a person has, it can be valuable to have short, easy-to-consume reminders of the basic things a company should consider.
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.
March 19, 2018
The District of Minnesota continues to see many cases transferred to other districts after last year’s Supreme Court decision on venue in patent cases in TC Heartland v. Kraft Foods.
December 18, 2017
The District of Minnesota recently issued its fourth post-Alice decision, this time addressing the question of patent subject matter eligibility for a check processing patent.
December 8, 2017
Over a year after the Supreme Court’s decision in Halo Electronics, district courts continue to disagree over what is required to adequately plead a claim for willful infringement. The District of Minnesota is beginning to enter the fray.
September 1, 2017
In May 2017, the United States Supreme Court decided TC Heartland LLC v. Kraft Foods and limited venue in patent cases to where a corporate defendant is incorporated or has a regular and established place of business.
July 12, 2017
The Honorable Donovan Frank recently issued only the second decision in the District of Minnesota to address the question of patentable subject matter under 35 U.S.C. § 101 in the context of a motion to dismiss.
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.
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.
May 8, 2017
In SCA Hygiene Products v. First Quality Baby Products, the Supreme Court recently ended over a 100 years of application of the equitable doctrine of laches in patent infringement cases.
May 8, 2017
Malicious counterfeiters often hide their identities, making it impossible to serve them through traditional means.
May 8, 2017
In M-I Drilling Fluids UK Ltd. v. Dynamic Air Inc., Chief Judge Tunheim recently adopted the Report and Recommendation of Magistrate Judge Bowbeer, finding the case to be exceptional and awarding attorneys’ fees against Plaintiff M-I.
January 25, 2017
By Timothy M. O’Shea and Ted C. Koshiol
Parties facing allegations of willful patent infringement can rebut the claim by proving that they relied in good faith upon the advice of counsel when undertaking the allegedly infringing activity. However, asserting the advice of counsel defense carries a heavy cost – waiver of privilege as to at least the attorney work product and attorney-client communications relied upon in formulating the opinion. Some courts have even extended the scope of this waiver more broadly to cover any information even considered by the advising counsel. This tradeoff leads many to forego raising the advice of counsel defense.
January 18, 2017
If you read past the title, you are a civil procedure nerd. The answer for you is as easy as two plus two. Rule 15! You can recite the standard in your sleep: “freely given when justice so requires.”
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.
January 9, 2017
In Solutran, Inc. v. Elavon, Inc. and U.S. Bancorp, Magistrate Judge Thorson recently granted the defendants’ motion to compel the production of three slides in a PowerPoint presentation that plaintiff claimed were protected by attorney-client privilege or the work product doctrine. Plaintiff initially produced the entire presentation, which included a section discussing patent litigation. The slides in that section were drafted by plaintiff’s attorneys and included the law firm’s logo. When the presentation was used in a deposition, plaintiff immediately clawed it back and subsequently produced a new version with the three slides at issue redacted.
December 23, 2016
Hydreon Corporation sells a product called FakeTV®, which deters burglars by emitting and projecting light patterns to simulate real television broadcasts. The light patterns make it appear that someone is home watching television when the house is actually empty. In recent years, counterfeit versions of the FakeTV® device have sprung up on Amazon.com and eBay.com. This has become an all-too-common occurrence for U.S. companies.
December 21, 2016
With the adoption of new Local Rule 5.6, the District of Minnesota will be changing the game for filing documents under seal in civil cases.
December 9, 2016
The maker of the popular Snuggie blanket, Allstar Marketing Group, LLC, sued Amazon for trademark infringement earlier this week, alleging that the online retailer enabled the importation and sale of counterfeit Snuggie blankets.
November 22, 2016
Contact: Intellectual Property Litigation Group
Under 28 U.S.C. § 1404(a), “[f]or the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought.” When a party moves to transfer venue under § 1404(a), courts consider: (1) “the convenience of the parties,” (2) “the convenience of the witnesses,” (3) “the interests of justice,” and (4) “any other relevant factors when comparing alternative venues.” A recent opinion from Judge Nelson in the The Valspar Corporation and Valspar Sourcing, Inc. v. PPG Industries, Inc. case provides useful guidance for parties considering such a motion, especially concerning the convenience-of-the-parties prong of the analysis.
October 19, 2016
The Federal Circuit’s recent patent eligibility opinion in McRO Inc. v. Bandai Namco Games America, 2016 WL 4896481 (Fed. Cir. Sept. 13, 2016) is the latest to find claims involving computer technology that survive a § 101 challenge.
August 30, 2016
The District of Minnesota recently held that the doctrine of issue preclusion bars a party from making any invalidity arguments or re-construing claims of a patent it has previously litigated.
August 25, 2016
The Federal Circuit has had few opportunities to address the new standard for proving indefiniteness since the Supreme Court relaxed the standard from “insoluble ambiguity” to “reasonable certainty” more than two years ago in Nautilus v. Biosig. Recently, however, the Federal Circuit applied Nautilus in affirming decisions in parallel cases, Icon Health & Fitness, Inc. v. Polar Electro Oy and Icon Health & Fitness, Inc. v. Garmin International, Inc., finding Icon’s asserted patent invalid as indefinite.
July 7, 2016
What is old is new again when it comes to willful infringement.
June 1, 2016
Debuting in the 2016 edition of the IAM Patent 1000: The World’s Leading Patent Professionals were Lora Friedemann and Ann M. Ladd. Also ranked again were Thomas R. Hipkins, Kurt J. Niederluecke, Charles D. Segelbaum and David C. West. The IAM Patent 1000 identifies the top patent professionals in key jurisdictions around the world.
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.
March 15, 2016
Contact: Intellectual Property Litigation
A recent order by Magistrate Judge Noel in Luminara Worldwide, LLC v. Liown Electronics Co. helps to clarify the Federal Rules on expert disclosures.
March 1, 2016
A Patent holder bringing an infringement suit sometimes brings suit to enforce hundreds of patent claims and may have little motivation to drop asserted claims until late in the litigation, leaving a defendant and the Court with numerous claims in the pre-trial phase. A recent case before Magistrate Judge Bowbeer offered further guidance on how and when courts should reduce the number of asserted claims.
January 22, 2016
It is not uncommon for a party seeking to license or acquire a patent to request information from the patent holder regarding the patent’s validity and strength. Often, this includes highly confidential documents between the patent holder and attorneys, which are generally privileged and protected from disclosure. However, disclosing privileged documents to a third party usually constitutes a waiver of the privilege. In limited circumstances, the “common interest doctrine” allows two or more entities with a joint interest to share privileged information without waiving its protection. This can include, for example, communications between separate parties negotiating a patent license. Before disclosing any privileged communications to a potential licensee, though, a patent holder should carefully consider whether they may be discoverable in subsequent litigation by a party seeking to invalidate the patent.
