Overview

Tom is the chair of the firm’s Patents Group. He advises technology-driven clients on minimizing 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 managing complex patent portfolios and 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.

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.

Services

Experience

Tom has worked with a wide range of technologies, including:

  • Contrast injection systems for cardiology and radiology
  • Connected home security systems and thermostats
  • Intravascular ultrasound (IVUS)
  • Diabetes management systems
  • Heart valve repair and replacement
  • Fractional flow reserve (FFR)
  • Industrial & commercial HVAC equipment
  • Implanted cochlear hearing systems
  • Cloud-based remote appliance control
  • Personal protective equipment
  • Photo-sonodynamic therapy
  • Vehicle seat suspension systems
  • Smoke detectors
  • Industrial safety gates
  • Automotive accessories
  • Flood barriers
  • Electronics manufacturing
  • Power distribution equipment
  • Complex rehabilitation technology
  • Generator docking stations
  • Aviation autoland technology
  • Unmanned air vehicles
  • Printer driver systems
  • Digital media applications
  • Food manufacturing
  • Pressure sensors and pressure transducers
  • Neuropathy testing and treatment equipment
  • Injection molding equipment
  • Mechanical elasticity imaging

Credentials

Education

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

Admissions

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

Recognition

  • Listed in IAM Patent 1000: The World’s Leading Patent Professionals, 2015-2022

Civic & Professional

Professional Activities

  • Midwest Intellectual Property Institute, Planning Committee Member
  • Honorable Jimmie V. Reyna Intellectual Property American Inn of Court
  • Minnesota Intellectual Property Law Association
  • American Intellectual Property Law Association
  • Leadership Council on Legal Diversity (LCLD), Fellow, 2023
  • Minnesota American Indian Bar Association
  • Minnesota Law Review, Managing Editor, 2002-2003; Staff Member, 2001-2002

Community

  • Camp Odayin, Board Member
  • Liberty Classical Academy, Past Board Member
  • Twin Cities Christian Legal Aid, Past Board Member

News & Insights

Publications & Presentations

Co-Presenter, Strategic Patent Drafting: Should You Be Your Own Lexicographer?, Midwest Intellectual Property Institute, September 23, 2021

Presenter, Inside Minnesota IP: Meet the Inventors, Artists and Entrepreneurs, Midwest IP Institute, September 28, 2018

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

Chapter Co-Author with Ryan Spanheimer, “Kimble v. Marvel Entertainment, LLC: Royalty Payments After Patent Term Expiration,” The IP Book, 2015

“A Rebuttable Presumption of Dedication: Protecting the Hard-Luck Patentee from Johnson & Johnston's Dedication Rule,” 87 Minnesota Law Review 779, 2003

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