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Patents
Fredrikson & Byron’s patent group is where law and business meet technology. Our resident patent lawyers and agents have expertise in a broad range of technologies, and we’re committed to understanding your business objectives and providing custom-tailored service.
What We Do
We offer a comprehensive patent practice within a full-service Intellectual Property group. We have the capabilities to file, register, prosecute and litigate patents on a global basis.
All of our patent attorneys are registered to practice before the U.S. Patent and Trademark Office. Each has at least one technical degree; many have advanced degrees. These attorneys work with our patent agents, paralegals, and staff scientists to provide high-quality, cost-effective protection.
When working with our clients, we commonly look beyond the immediate goal of patent application and take a global perspective as we balance the risks and benefits of various levels of protection and evaluate how patent coverage integrates with the client’s business needs. As clients' businesses and IP portfolios evolve, we work with them on the technology transfer side as well, to correlate their own growing IP portfolios with processes for "licensing in" the rights of other patentees, or "licensing out" their own patents to others.
Patent Services
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Domestic and international application preparation, filing and prosecution strategies of utility and design applications
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Post grant proceedings
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Opinions regarding patent validity and infringement
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Client counseling on intellectual property issues
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Freedom-to-operate investigations
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Due diligence investigations
Experience
While the size and strength of our team allows us to service high-volume patent filers, we specialize in providing full-service patent counsel to companies who take a strategic approach to protecting their technology. We prepare and prosecute hundreds of patent applications each year for companies that generate between $2 million and $40 billion in annual revenue and for emerging companies.
Representative Experience
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A leading glass company that makes residential glass for doors and windows turns to us for counsel in many different facets of intellectual property for the past 15 years. We study the patent landscape of coatings and assist the company in weaving its way through patents of its competitors. We obtain patent protection for its technology and we successfully challenge competitor patents in post grant proceedings.
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We regularly represent some of America’s largest and most well-recognized companies, including those appearing on the Fortune 500 and Fortune 100 lists, in sophisticated patent matters. While we can and often do handle patent preparation and prosecution for these clients, they more often call upon us for strategic patent counseling. From conducting patent infringement / non-infringement investigations to rendering opinions and providing offensive and defensive representation at the U.S. Patent and Trademark Office, we provide advanced patent services to guide these large corporations through their most complex patent challenges.
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With a deep knowledge of private equity transactions and market valuation drivers, we represent both private equity firms and acquisition targets in their patent matters. We create high-value patent portfolios and establish market-leading patent positions, ensuring that our client’s intellectual assert are fully protected and fully valued for downstream transactions.
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A nationally recognized celebrity entrepreneur, with over 120 patents, relies on us to protect her innovations, which are sold on a television shopping network.
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We have established professional relationships with more than 20 firms worldwide to help our clients gain patent protection in other countries as well as help our international clients obtain patent protection in the United States.
News & Articles
New Guidance Coming from the USPTO on Patent Eligibility?
October 11, 2018
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.
Read MoreBatter Up! Patent Practitioners Need Various Pitches When Facing Final Rejection
September 12, 2018
The annual playoffs for Major League Baseball will soon begin in the U.S.
Read MoreFederal 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.
Read MorePre-Appeal Brief Review Request – Is It Worth It?
July 16, 2018
A Pre-Appeal Brief Review Request (PABR) offers an alternate to traditional options when applicants face a final rejection of their application. When is a PABR worth it?
Read MoreAttorneys 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.
Read MoreTop 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.
Read MoreSupreme 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.
Read MoreSelecting a Lead Compound: A Balancing Act in the Chemical Obviousness Inquiry
March 6, 2018
Since 2000, the Federal Circuit has routinely applied the Lead Compound Analysis to assess the patentability of chemical compounds. This two-part test is gaining traction at the Patent Trial and Appeal Board. What does this mean for patent owners and patent challengers?
Read MoreProsecution “Overtime” Extended by USPTO
October 16, 2017
Football is once again underway in the U.S. Many thrilling moments in the game of football involve one team tying the score late and then prevailing in overtime.
Read MoreBeing Strategic About Foreign Patent Filing
September 18, 2017
Being strategic about where to pursue foreign patent protection can go a long way in efficiently using available resources while still acquiring meaningful protection for an invention.
Read MorePatent Trial and Appeal Board Creates Loophole to Challenge Written Description and Enablement in Older Patent Families
June 15, 2017
The Patent Trial and Appeal Board’s May 10 decision in Minerva Surgical, Inc. v. Hologic, Inc. creates a loophole in Patent Office post-grant practice that enables challengers to bring new kinds of invalidity attacks against patents claiming priority to older applications.
Read MoreDesigning into Patent Protection: Proactively Protecting the Replacement Component
January 26, 2017
Replacement components can be big business. However, the replacement component market may quickly become crowded with competitors attracted by lucrative profit margins. Accordingly, considering strategies for replacement component patent protection at the product development stage can be critical. By planning at the outset of product development, a company can “design into” patent protection for the replacement component itself.
Read MorePatent Prosecution Highway: Is It the Promised Expressway or Is It a Roadblock?
November 8, 2016
By Natalie D. Kadievitch & Krithiga Ganesan
The IP5 Patent Prosecution Highway Program (the PPH Program) has been available to U.S. patent applicants for just over two years. It was implemented to permit cooperation between the five largest Patent Offices—Europe, Japan, Korea, China and the U.S.—to fast track examination of applications.
Read MoreFederal 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.
Read MoreAvoiding 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.
Read MoreSix 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.
Read MoreFederal Circuit Strikes Another Blow Against Patentable Subject Matter in Biotechnology
April 26, 2016
By Katherine J. Rahlin & Kara K. Fairbairn
In Genetic Technologies Ltd. v. Merial LLC, the Court of Appeals for the Federal Circuit recently issued an opinion holding yet another biotech patent invalid. The Federal Circuit applied the two-step Alice/Mayo test for patent eligibility in upholding the district court’s finding of invalidity. The patent at issue, U.S. Patent No. 5,612,179 (the ‘179 patent), is directed to methods of analyzing DNA sequences to detect an allele of gene by amplifying non-coding regions of the DNA. The parties agreed that claim 1 is representative of all of the invalidated claims:
Read MoreI Still Have a Year to File My Patent (don’t I?)
December 8, 2015
By Krithiga Ganesan & Philip M. Goldman
Many inventors have long assumed that they have a one year “grace period” in which they can file for patent protection after having publicly sold or revealed their invention. Given the evolving landscape created by the recent America Invents Act (AIA), it has now become all the more risky to rely on that thought.
Read MoreMagistrate 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.
Read MoreKimble 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.
Read MoreInvalidity 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.
Read MorePatent 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.
Read MoreAttorneys Eric Snustad & Charles Segelbaum Featured in The National Law Journal’s Twin Cities Counsel to Counsel Report
April 13, 2015
Shareholders Eric J. Snustad and Charles D. Segelbaum were featured in The National Law Journal’s Twin Cities Counsel to Counsel Report for their intellectual property work for Tennant Co.
Read MoreAttorney Ryan Spanheimer Joins Fredrikson & Byron
December 22, 2014
Attorney Ryan M. Spanheimer has joined Fredrikson & Byron’s Intellectual Property and Patents Groups.
Read MoreAre Any Method Claims Safe from Alice?
November 4, 2014
By John S. Parzych and Krithiga Ganesan
It is no secret that the U.S. Supreme Court’s decision in Alice Corp. v. CLS Bank International (Alice) is wreaking havoc to software and business method patents found to merely link abstract ideas with conventional elements, such as a computer. However, we are now also getting a taste of Alice’s potential effects on non-business method patents.
Read MoreLimelight 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.
Read MoreNew 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.
Read MoreFederal Circuit Court of Appeals Denies Patent on Cloned Animals to the Inventors of Dolly the Sheep
May 12, 2014
By Mia E. Mendoza and Kara K. Fairbairn
Last week, in the case of In re Roslin Institute (Edinburgh), the Federal Circuit Court of Appeals held that claims to cloned animals were not eligible for patent protection under 35 U.S.C §101 because the cloned animals are copies of products of nature. A key factor in the decision was that, although cloned animals are not completely identical to the animals from which they were copied, the differences between them were not claimed. The biotech community should take note of this decision which has important implications for the patentability of many biotech products as well as how to draft claims to avoid problems under §101.
Read MoreThe “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.
Read MoreNew USPTO Guidelines for Interpreting Patent Eligibility under Myriad and Prometheus Cases
March 6, 2014
By Kara K. Fairbairn and Mia E. Mendoza
The United States Patent and Trademark Office (USPTO) just published new guidelines advising examiners and the public of the factors for determining whether an invention satisfies the U.S. Supreme Court’s interpretation of patent eligible subject matter under 35 U.S.C. §101 under their Myriad and Prometheus holdings.
Read MoreIs It Time to Reevaluate Your Patent Licenses? The Supreme Court Strengthens the Hand of Licensees in MedImmune and Medtronic
March 5, 2014
If you have a license to a patent and have lingering doubts about whether the patent actually covers your product, two recent Supreme Court decisions should be of interest to you.
Read MorePatent 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.
Read MoreAIA’s Elimination of Best Mode Requirement – Open Door for Patent AND Trade Secret?
January 13, 2014
Is it now possible to get a patent on the broad strokes of an invention while at the same time creating potentially never-ending trade secret protection on the cleverest aspects of the invention? In the opinion of this author, the answer is “no,” but this may change.
Read MorePatent Publications: An Offensive and Defensive Tool
October 1, 2013
Everyone knows the adage “the best defense is a good offense.” That adage can now be applied to the field of patent procurement. United States patent laws recently underwent a radical transformation from a first to invent system to a first to file system.
Read MoreChanges on the Horizon for European Patenting
July 1, 2013
Just as people were starting to gain a sense of comfort dealing with changes to the U.S. patent system brought on by the America Invents Act of 2011, we now find that Europe is also planning changes to its own patent system.
Read MoreNew 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.”
Read MoreAmerica Invents Act
October 1, 2011
The most significant revamping of United States patent law in the last 50 years was enacted on September 16, 2011, with President Obama’s signature of the America Invents Act. The Act, which will be implemented over the next 18 months, changes the procedures for obtaining new patents and provides new tools for challenging existing patents.
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