Intellectual Property Litigation

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.

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Grant D. Fairbairn

Email: gfairbairn@fredlaw.com
Office: 612.492.7255

FEATURES

IAM Patent 1000 Names Seven Fredrikson & Byron Attorneys in its 2021 Edition

Fredrikson Trademark Attorneys Recognized in 2021 World Trademark Review 1000

Fredrikson & Byron’s IP Litigation Group included in Tier 1 Metropolitan “Best Law Firm” ranking by U.S. News – Best Lawyers® in 2021

What We Do

Map of America highlighting states we have litigated cases

From dispute advice to complex litigation, our team understands our clients’ business objectives and legal issues. We handle disputes across the country−to date we have litigated in 36 states and the District of Columbia.

Our IP Litigation Group provides the following range of services:

Patent Litigation. Our attorneys handle patent infringement litigation in every industry and business sector. We are known for bringing complex concepts to life for judges and juries.
Trademark Litigation. Our attorneys have substantial experience in trademark, trade dress, false advertising and domain name disputes. We handle matters before the Trademark Trial and Appeal Board, opposing or seeking to cancel the registration of trademarks confusingly similar to those of our clients and defending against similar claims.
Licensing Disputes. Our attorneys have successfully litigated sizeable licensing disputes involving critical intellectual property assets.
Trade Secret Litigation. Our intellectual property litigators work on cases involving technological secrets, formulas and manufacturing and other critical business information.
Copyright Litigation. Our group’s copyright litigation experience spans publishing, architecture, arts & entertainment, software and more.
Anti-Counterfeiting and Anti-Piracy Litigation. Our attorneys develop prevention strategies to help you protect your intellectual property. If knockoff products appear on the market, we help stop infringers and protect you in and out of court.

In addition to this suite of legal services, our team is trained in legal project management and offers predictable budgeting and custom communication plans to meet each of our client’s preferences.

Our litigators have been recognized nationally as leaders in the field, garnering honors from IP Law Experts, IAM Patent 1000, World Trademark Review 1000, Chambers USA, Best Lawyers®, and Minnesota Super Lawyers.

Experience

Representative Clients

Hormel Foods Corporation
Medtronic
Becton, Dickinson and Company
Merrill Corporation

Patent Litigation

We obtained dismissal of a lawsuit filed by a non-practicing entity (NPE) in the District of Delaware against our client who makes software that public companies use to file with the SEC. An NPE sued the client for patent infringement. The patent owner claimed that its patents cover the use of XBRL, an international standard for reporting financial information. According to the patent owner, people who file with the SEC in the required format are infringing its patents. We first moved to dismiss under Section 101, then contacted the SEC to encourage the agency to intervene in the lawsuit and, finally, filed Inter Partes Review (IPR) petitions. All three avenues were successful.
We defended a patent infringement lawsuit filed in the Central District of California. The asserted patent was directed to remote alert notification systems for assisted living facilities. After receiving our motion to dismiss the lawsuit based on Section 101, the patent owner chose to dismiss the lawsuit voluntarily.
We were retained by a large medical technology company to defend it in three patent infringement lawsuits. The first lawsuit involved patent infringement claims of three unrelated patents involving infusion pump technology. We initiated a multi-faceted attack involving two challenges under Section 101 and filing three IPR petitions. The Patent Trial and Appeal Board invalidated all of the instituted claims, resulting in claimant dismissing the heart of its case. In all, we disposed of 25 of the 35 asserted patent claims before summary judgment. In the second lawsuit, we filed three IPR petitions and convinced the District Court to stay the lawsuit before an IPR institution decision was made. In the third lawsuit, we utilized a Section 101 motion with three IPR petitions to stay the litigation prior to the initial scheduling conference pending the instituted IPR trials and any appeal.
Our team won summary judgment in the U.S. District Court for the District of Delaware that invalidated a patent covering a method of making precooked bacon on an industrial scale. Our client was accused of infringement by a claimant seeking tens of millions of dollars in damages. The asserted patent covered precooked bacon that “resembles a pan-fried bacon product.” Our team convinced the judge that the phrase was purely subjective, rendering the entire patent invalid. The judge found our expert to be “clearly and convincingly credible.”

Trademark Litigation

Often engaged to protect important trademarks, our team has achieved successful outcomes for prominent brand owners in litigation across the country. We currently represent the Estate of the late artist Prince in several lawsuits concerning the PRINCE® trademark.
Our team defended a large manufacturer in a trademark infringement lawsuit involving the company’s top-selling product. After obtaining a decision dismissing the damages claim, we negotiated a settlement that secured the client’s rights in the mark.
We have prosecuted and defended lawsuits concerning lookalike packaging and trade dress. In one example we represented an international restauranteur against an imitator and forced changes to the opponent’s brand.
We have handled all aspects of trademark opposition proceedings for numerous clients before the Trademark Trial and Appeal Board.

Licensing Disputes

Our team defended AGA Medical in a licensing dispute initially valued by the plaintiff at $300 million, including a two-phased trial. After trial and raising a concern over the validity of the license agreement, the presiding judge initiated a settlement conference that lead to a favorable settlement well below pretrial settlement demands.
We represented a mortarless retaining wall design company in a trial before the Western District of Wisconsin and two appeals before the Seventh Circuit Court of Appeals regarding the company’s enforcement of a license agreement, resulting in a finding of liability, injunction and full damages award.
Our attorneys represented Medtronic in licensing disputes with various parties. In one instance, we were able to convince a licensee, without resorting to litigation, to restart and complete license payments after it initially determined it could cease payments, resulting in $2 million in additional royalties.

Trade Secret Litigation

Our attorneys represented a medical device company in a lawsuit to protect its trade secrets. Our client developed a new technology and entered into a non-disclosure agreement with a potential vendor. The vendor later applied for a patent that incorporated our client’s technology. We filed suit and achieved a settlement that keeps the competitor out of our client’s market.
We represented a manufacturer of electronic medical records software in trade secret litigation with the former employee of a development partner. Our client co-developed key software that performs natural language processing of medical records. One of the principal designers of the software subsequently left our client’s development partner, taking copies of the software’s source code with him and deleting the code from his employer’s computers. When our client learned that the former employee was attempting to sell the software to other customers, we joined in a lawsuit with our client’s co-developer to protect the technology and recover the stolen source code. The case was tried before a jury in the U.S. District of Minnesota, and the jury decided and the Court ruled in favor of our client on all claims.

Copyright Litigation

We recently obtained an award of nearly $4 million in damages and attorney’s fees in an arbitration hearing involving the unauthorized use of music owned by the Estate of Prince Rogers Nelson.
Our team defended a Fortune 500 company in a copyright infringement lawsuit in Indiana. After identifying numerous obstacles to the plaintiff’s claim, the plaintiff agreed to dismiss the lawsuit.

Anti-Counterfeiting and Anti-Piracy Litigation

Our attorneys represented the Estate of Prince Rogers Nelson in litigation concerning the late superstar’s intellectual property assets. In one case, we brought suit against a bootleg record label asserting claims for trademark infringement, trademark counterfeiting, copyright infringement, bootlegging and violating Prince’s right of publicity. We obtained a default judgment against one of the bootleggers for $7 million plus attorney’s fees.
We obtained a default judgment against a defendant who was selling counterfeit products on Amazon. The district court found willful patent infringement, entered a permanent injunction against the seller, awarded treble damages and attorney’s fees to our client and held the defendant in contempt when it violated the injunction. We succeeded in removing the counterfeiter’s fake products from the market.
Our team brought suit for patent infringement against a large group of related counterfeiters who were selling on Amazon. We obtained a consent judgment against the largest violator and negotiated settlements with the remaining defendants. As a result of the lawsuit, the infringing products were removed from Amazon.
We brought lawsuits enforcing utility and design patents when counterfeit products from China began appearing in U.S. retail outlets. We negotiated favorable settlements that compensated our client for the infringement and forced changes in purchasing channels to reduce the risk of future counterfeits.

News & Articles

Attorney Luke P. de Leon Joins Fredrikson & Byron’s Intellectual Property Litigation Group

November 5, 2021

Attorney Luke P. de Leon has joined Fredrikson & Byron as an associate in the Intellectual Property Litigation and Litigation Groups.

Intellectual Property Litigation

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