(Don’t) Do It for the Insta – Fair Use May Not Save Hashtags That Identify a Competitor’s Products
Instagram and other social media platforms have become fertile ground for all manner of intellectual property disputes.
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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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Our Team
What We Do
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:
- Patent Litigation. We bring complex concepts to life for judges and juries. Our trial attorneys handle patent infringement litigation across the country in every industry and business sector.
- Trademark Litigation. Our attorneys have substantial experience in trademark, trade dress, false advertising and domain name disputes. We also 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 intellectual property 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.
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.
Experience
Representative Clients
- AGA Medical
- Arctic Cat
- Buffalo Wild Wings
- Ergotron
- Hormel Foods
- Medtronic
Patent Litigation
- Represent the world’s leading medical products provider in various patent and licensing disputes. In one case, we filed suit against a competitor in the Middle District of Florida. Our team obtained a consent injunction, forcing the opponent to stop selling the infringing product at an early stage, before the claim construction hearing.
- Currently defend a manufacturer of wireless intercom systems in a patent infringement lawsuit filed by 3M. We obtained a stay of the case pending reexamination of the patents. We have been adverse to 3M nine times in the last five years.
- Successfully defended accused patent infringers in the Eastern District of Texas. Our clients faced an opponent seeking $64 million in damages. The case was quickly settled after the jury returned an award of $3 million, well below any prior settlement demand.
Licensing Disputes
- Defended AGA Medical in a licensing dispute initially valued by the plaintiff at $300 million, including a two-phased trial in the spring of 2013. 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.
- Represented a mortarless retaining wall design company in a trial and two appeals regarding the company’s enforcement of a license agreement in the Western District of Wisconsin and the Seventh Circuit Court of Appeals, resulting in a finding of liability, injunction and full damages award.
- 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.
Trademark Litigation
- Defend trademarks owned by a Minnesota manufacturer of off-road vehicles in trademark litigation. In 2012, we obtained a favorable global settlement in a trademark dispute involving our client’s primary logo. We are currently defending the client in a trademark infringement case involving one of the client’s best-selling products.
- Represented a well-known restaurant chain in trademark and trade dress enforcement proceedings. In 2012, we obtained a permanent injunction against a competing restaurant chain requiring the competitor to change the restaurant’s logos and color scheme.
- Represent the world’s leading medical device provider in trademark enforcement and TTAB proceedings. In one recent case, the defendant changed the infringing advertising materials in response to our preliminary injunction motion.
Trade Secret Litigation
- 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.
- 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 federal court for the U.S. District of Minnesota, and the Court ruled in favor of our client on all claims.
News & Articles
Amazon’s Project Zero Initiative Seeks to Place Brand Owners in Control
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.
Fredrikson & Byron Trademark Attorneys Recognized in 2019 World Trademark Review 1000
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.
Knock it Off: E-Commerce Platforms Continue to Battle Counterfeiters
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.
New Faces on the Minnesota Bench
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.
Federal Circuit Holds that Tribal Sovereign Immunity Does Not Bar Inter Partes Review
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.
Attorneys Recognized in IAM 2018 Patent 1000 Guide
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.
Top 10 List of Basic Do’s and Don’ts for IP
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.
Supreme Court Upholds Constitutionality of Inter Partes Review – PTAB Must Decide Patentability of All Challenged Claims
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.
Different Bases, Same Result in District of Minnesota Transfer Cases
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.
District of Minnesota Rejects Alice Challenge to Check Processing Patent Claims
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.
Pleading Willfulness in the District of Minnesota Post-Halo
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.
On the Move: Judge Nelson Ships a Patent Case to Pennsylvania Under TC Heartland
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.
Procedural Context Proves Critical for § 101 Alice Patent Challenge in District of Minnesota
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.
Supreme Court Dramatically Restricts Venue in Patent Cases
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.
Federal Circuit’s Helsinn Decision Limits America Invents Act Changes to “On Sale” Prior Art
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.
When it Comes to Asserting the Defense of Laches, Patent Infringers are Out of Time
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.
Using Email Service to Fight Counterfeiters
Malicious counterfeiters often hide their identities, making it impossible to serve them through traditional means.
Relying On Assumptions in Your Complaint May Subject You to An Exceptional Case Finding and Award Of Attorneys’ Fees
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.
Do Not Waive Privilege After Declining to Assert the Advice of Counsel Defense
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.
Civil Procedure Quiz: What Rule Applies to Motions to Amend Pleadings?
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.”
Phigenix Decision Limits Appeals from America Invents Act Trials
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.
To Avoid Waiver, Attorney Advice Should Only Be Disclosed to Those with a Need-To-Know
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.
The District Court Knocks Down a Counterfeiter—Hydreon Corp. v. JC Brothers, Inc.
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.
District of Minnesota Adopts Local Rule 5.6, – Instituting New Processes and Requirements for Civil Parties Filing Under Seal
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.
Is Amazon Liable for Counterfeits?
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.
District Judge Susan Richard Nelson Provides Useful Guidance on 1404(a) Transfer Requests
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.
Federal Circuit Adds Arrow to Quiver for Defending Against an Alice Challenge
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.
Your First Shot to Invalidate a Patent May be Your Last—District of Minnesota Holds Issue Preclusion Bars Party from Presenting ANY Invalidity Arguments
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.
No “Reasonable Certainty” for Icon Health & Fitness at Federal Circuit
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.
The Supreme Court Turns Back the Clock on Willful Infringement with Halo Electronics
July 7, 2016
What is old is new again when it comes to willful infringement.
Six Fredrikson & Byron Attorneys Recognized in Intellectual Asset Management’s 2016 Patent 1000 Guide
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.
President Obama Signs National Trade Secret Law
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.
Recent Order from Magistrate Judge Franklin L. Noel Provides Important Lessons on Expert Disclosures
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.
Magistrate Judge Hildy Bowbeer Offers Further Guidance on When a Court Should Order a Patentee to Reduce the Number of Asserted Claims
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.
Think Twice Before Sharing Privileged Documents with a Potential Patent Licensee
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.
Patent Plaintiffs Beware!
December 2, 2015
Pleading patent infringement got a little bit trickier on December 1, 2015.
Permission Needed For Early Summary Judgment Motion
November 13, 2015
An early motion for summary judgment can be a useful tool when a claim turns on a question of law and the facts are not in dispute. In other cases, summary judgment is more appropriate after the opponent has had a full opportunity for discovery.
Willful Patent Infringement May Soon Be Provable Once Again
November 4, 2015
On October 19, the Supreme Court granted certiorari in two cases in which patent owners are challenging the Federal Circuit’s rigid standard for proving willful infringement. In their petitions, both patent owners compared the current test for enhanced damages to the Federal Circuit’s old test for attorney’s fees, which the Supreme Court tossed out last year in Octane Fitness LLC v. ICON Health & Fitness, Inc.
Practical Reminder for Ensuring Privileged Documents Stay Privileged
October 13, 2015
For all the protection the attorney-client privilege offers, it presents a bevy of potential pitfalls that may lead to the ultimate disclosure of the privileged documents.
Accused Infringer Prevails on Laches Defense
October 6, 2015
If you sit on your rights as a patent owner, you may lose your claims against infringers. Patent owner Dane Technologies recently learned that lesson the hard way.
Magistrate Judge Rau Offers Primer on “Prevailing Party” Status Under the Patent Act’s Attorney Fees Provision
September 28, 2015
Patent law permits the award of legal fees to a “prevailing party” only in “exceptional cases.” A recent decision from Magistrate Judge Rau applying the Patent Act’s attorney fees provision reminds litigants that demonstrating a case is “exceptional” in only one part of the equation.
District Court in Octane Fitness Remand Awards Majority of Requested Attorneys’ Fees Under Section 285
September 11, 2015
By Kurt J. Niederluecke & Adam R. Steinert
In a lawsuit that redefined the standard for an exceptional case under 35 U.S.C. § 285, the District Court awarded defendant Octane Fitness $1,778,030 in fees and costs. The District Court initially denied Octane Fitness’ motion for fees. But after the Supreme Court redefined the standard on appeal, reversed and remanded the case (Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S. Ct. 1749 (2014)), the District Court found the case exceptional under the new standard.
Want to Preliminarily Enjoin the Sale of an Infringing Device? Be Prepared to Show the Value of Your Patent
September 3, 2015
Recently, the District Court of Minnesota denied a patent holder’s motion to preliminarily enjoin the sale of an infringing device because the patentee failed to show a sufficient nexus between the allegedly infringing technology and lost sales.
Patent Infringement Case Stayed Pending IPR on Some (But Not All) Asserted Claims
August 17, 2015
Should a patent infringement lawsuit be stayed where an IPR challenges some, but not all, of the asserted claims? Magistrate Judge Hildy Bowbeer grappled with that issue in Oticon A/S v. GN Resound A/S, Case No. 15-cv-2066. Oticon, the patent holder, accused GN Resound of infringing 22 claims in a single patent. GN Resound petitioned for inter partes review. The PTAB instituted review on eighteen claims, but declined to institute review on the remaining four claims.
District of Minnesota Orders Patentee to Reduce Number of Asserted Claims After Filing Joint Claim Construction Statement
In May, the District of Minnesota ordered the parties in a patent case to meet and confer to try to reach an agreement regarding the deadline by which the patentee must reduce the number of asserted claims.
Fees Will Be Awarded In Exceptional Patent Case
July 29, 2015
Octane Fitness, the winner in a six year patent infringement lawsuit, will receive an award of attorney’s fees. In 2014, the case resulted in a change in the legal standard that applies when a prevailing party seeks a finding that a patent case is “exceptional,” allowing the party to seek an award of attorney’s fees.
Kimble v. Marvel Entertainment – The Supreme Court Tells Patent Licensors to Get Creative
July 21, 2015
In 1964, the Supreme Court decided Brulotte v. Thys and held that a patent owner cannot charge royalties for the use of a patented invention after the patent’s term has expired. While the Brulotte rule is simple, it has faced plenty of criticism over the years. Lower courts and academics alike have challenged the economic logic underlying the rule and criticized the decision as counterintuitive.
Invalidity Opinions of Counsel After Commil
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.
Patent Troll Bill Resurfaces in the Congress
June 16, 2015
Last year Congress tried to pass a bill aimed at curbing abusive patent litigation initiated by so-called “patent trolls,” or non-practicing entities (NPEs), but the bill died in the Senate when it was dropped from the Senate’s agenda as it was nearing a vote, even though the bill had passed in the House and President Obama had indicated he would sign it. This year, the push for legislation has been revived and bills have been introduced in both the House of Representative and the Senate.
Limelight Decision Opens the Door to Challenge Federal Circuit’s Standard for Direct Infringement of a Method Claim
June 30, 2014
The United States Supreme Court recently confirmed the long-standing law regarding inducement of infringement in their decision in Limelight Networks, Inc. v. Akamai Technologies, Inc. Patent holders should read more for an analysis of the decision.
New Standard for Awarding Attorneys’ Fees in a Patent Case Could Deter Frivolous Lawsuits
May 21, 2014
By Timothy M. O’Shea and Ted C. Koshiol
The United States Supreme Court recently changed the standard for awarding attorneys’ fees in infringement cases, giving district courts greater latitude to award fees, and making it less likely that those awards will be overturned on appeal.
The “AIA Pause Button” for “CBM” Review: Now Functional in Minnesota
March 13, 2014
By Lora Friedemann and Nikola L. Datzov
A three year old patent suit has been stayed pending review in the Patent Trial and Appeal Board. The stay is the first granted in the District of Minnesota since the Leahy-Smith America Invents Act created a new procedure for challenging Covered Business Method patents. When granting the stay, the Court expressed “grave doubts” about the validity of the patents.
Three Fredrikson & Byron Attorneys Named to World Trademark Review 1000
February 24, 2014
Fredrikson & Byron is pleased to announce that Stephen Bergerson, Lora Mitchell Friedemann and John Pickerill were recognized in the 2014 edition of the World Trademark Review 1000 (WTR 1000).
New Vermont Law May Create Liability for Alleging Patent Infringement
June 1, 2013
A new Vermont state law set to go into effect on July 1, 2013, creates penalties for “bad faith assertions of patent infringement.”
