Alan W. Kowalchyk

Assistant:

Vicki Hanson
vhanson@merchantgould.com
612.371.5394

Education

Bar Admissions

Professional Affiliations

Presentations and Publications

Representative Cases

Litigation Experience

Federal Court Appellate Experience

Alan practices all aspects of Intellectual Property law with an emphasis on patent litigation, client counseling and alternative dispute resolution. He is experienced in patent infringement and validity assessment, as well as advising clients on patent portfolio management, and has handled all phases of patent prosecution, as well as patent appeals and reexaminations. Alan's areas of technical expertise include immunology, microbiology, genetic engineering, food science, applied chemistry, pharmaceuticals, medical devices, commercial and consumer products. He also is a State of Minnesota Qualified Neutral for adjudicative services and mediation, a member of the American Arbitration Association's National Panel of Neutrals and a member of the World Intellectual Property Organization's list of Arbitrators and Mediators. As a Special Assistant Attorney General for Minnesota in the early 1980's, Alan handled litigation and administrative agency matters primarily in the environmental area. Alan is an adjunct Professor at William Mitchell College of Law, and has been recognized as a "Super Lawyer" by Minnesota Law & Politics and Thompson Rueters. Alan has also achieved an AV peer review rating by Martindale-Hubbell.

Education

University of Wisconsin-Madison
B.S., Natural Science, 1976; M.S., Food Science, 1977

Hamline University
J.D., cum laude, 1981

Bar Admissions

The Supreme Court of the State of Minnesota, 1981
United States District Court - Minnesota, 1982
United States Court of Appeals 8th Circuit, 1985
United States Patent and Trademark Office, 1984
United States Court of Appeals - Federal Circuit, 1986

Professional Affiliations

Minnesota State Bar Association
Federal Circuit Bar Association
American Bar Association
American Intellectual Property Law Association
Minnesota Intellectual Property Law Association

Presentations and Publications

Panelist at University of Washington: High Technology Protection Suit on July 22, 2011 on the topic: Will Therasense Ease Administrative Burden of Complex Domestic and International Patent Prosecution.

"Patent Reexamination:An Effective Litigation Alternative?", Landslide®, ABA Section of Intellectual Property Law, Volume 3, No. 1, September/October 2010. View 

"Facts and Myths of Patent Re-Examinations", Law360, Intellectual Property (January 15, 2010)

"Resolving Intellectual Property Disputes Outside of Court: Using ADR to Take Control of Your Case", Dispute Resolution Journal, 61(2), 28-37 (May/July 2006)

"Inequitable Conduct and Establishing Deceptive Intent - Is Guidance Coming?" 2010 High Technology Protection Summit at the University of Washington School of Law, Seattle, WA, July 23-24, 2010.

"The Inequitable Conduct Defense Lives On: 2003 Federal Circuit Decisions and Their Impact"
The John Marshall Review of Intellectual Property Law - September 2004 View

Wausau Paper Towel & Tissue, LLC V. F&B Company, Inc.; Civil Action No. 09-2269 (N.D. Cal)

Mr. Kowalchyk was lead counsel representing plaintiffs in a patent infringement case regarding paper roll technology. Mr. Kowalchyk successfully settled the case with an acknowledgment of infringement and the defendant agreeing to cease and desist from further manufacture, use, and sale of the infringing product.

Worldwide Integrated Resources, Inc. v. Wausau Paper Towel & Tissue, LLC; Civil Action No. 07-07656 (C. D. CA)

Mr. Kowalchyk was lead counsel representing defendant in the patent infringement case involving paper towel adapter technology. The case was settled on terms allowing Mr. Kowalchyk's client to continue pursuing its business interests.

Larson Manufacturing Company of South Dakota, Inc. v. AluminArt Products Limited and ChamberDoor Industries, Inc.; Civil Action No. 3-4244 (D. S.D.)

Mr. Kowalchyk was lead counsel representing defendants in a patent infringement case regarding retractable screen door technology. The case was tried to the court on the issue of inequitable conduct with Mr. Kowalchyk successfully obtaining a judgment in favor of his client that the patent-in-suit was unenforceable based on inequitable conduct. The Federal Circuit affirmed in part and reversed in part the district court decision and remanded the case for reconsideration based on the Court's opinion. The case was settled on terms allowing Mr. Kowalchyk's client to continue pursuing its business interests.

Greenheck Fan Corporation v.  Loren Cook Company; Case No. 3:08-cv-00335 (W.D. WI)

Mr. Kowalchyk was lead counsel representing plaintiff in this patent infringement case involving fan technology. The case was successfully settled. 

Micromesh Technology Corporation v. Red Wing Shoe Company; Civil Action No. 2-06-421 (E.D. Tex.)

Mr. Kowalchyk was lead counsel representing defendant in a patent infringement case regarding a laminated fabric patent. The case was successfully settled with a dismissal of the case.

Cushion Technologies LLC v. American Sporting Goods Corp et al; Civil Action No. 2:07cv109 (E.D. Tex.)

Mr. Kowalchyk represented defendant Red Wing Shoes Company in this patent infringement case involving shoe technology. The case was successfully settled.

Sandoz Nutrition Corporation v. Nutrition Medical, Inc.; Civil Action No. 4-95-488 (D. Minn.)

Mr. Kowalchyk was lead counsel representing plaintiff in a patent infringement case regarding nutritional supplement patents. After discovery, the case was settled with a monetary award to Mr. Kowalchyk's client and a permanent injunction. Mr. Kowalchyk successfully obtained summary judgment for his client, finding no inequitable conduct in patents-in-suit.

Master Builders, Inc. v. General Resource Technology, Inc.; Civil Action No. 4-96-1121 (D. Minn.)

Mr. Kowalchyk was lead counsel representing plaintiff in a patent infringement case regarding industrial chemical formulation patents. The case was settled with Mr. Kowalchyk successfully obtaining a Consent Judgment and permanent injunction in favor of his client.

James J. Toth v. Sheldahl Inc.; Civil Action No. 6:93-2215-20 (D. S.C.)

Mr. Kowalchyk was lead counsel representing defendant in a patent infringement case regarding flexible circuit board lamination technology. Mr. Kowalchyk obtained a dismissal of the case against his client based on a lack of jurisdiction.

The Toro Company v. Dixon Industries, Inc.; Civil Action No. 4-95-222 (D. Minn.)

Mr. Kowalchyk was lead counsel representing plaintiff in this patent infringement case regarding lawn mower equipment. The case was settled with Mr. Kowalchyk obtaining a Final Consent Judgment finding infringement, valid patents, and a significant monetary recovery for his client.

The Toro Company v. Kubota Tractor Corporation and Auburn Consolidated Industries, Inc.; Civil Action No. 4-94-629 (D. Minn.)

Mr. Kowalchyk was lead counsel representing plaintiff in this patent infringement case regarding lawn mower equipment. The case was settled with Mr. Kowalchyk obtaining a Final Consent Judgment finding infringement and significant monetary recovery for his client.

J&D Sales, Inc. v. Schaefer Ventilation Equipment et al.; Civil Action No. 01-C-0612-C (D. Wisconsin)

Mr. Kowalchyk represented the defendant in a patent infringement action regarding commercial fans. The case was settled on terms allowing Mr. Kowalchyk's client to continue pursuing its business interests.

Trencor Inc. v. Vermeer Manufacturing Company and Vermeer Equipment of Texas, Inc.; Civil Action No. 4-94CV-818-A (D. Texas)

Mr. Kowalchyk represented the defendant in a patent infringement action regarding road construction equipment. The case was settled on terms allowing Mr. Kowalchyk's client to continue pursuing its business interests.

Champion Brass Manufacturing Co. v. The Toro Company; Civil Action No. 93 2805 (C.D. Cal.)

Mr. Kowalchyk represented the defendant in a patent infringement action regarding an irrigation patent. The case was settled on terms allowing Mr. Kowalchyk's client to continue pursuing its business interests.

Mr. Kowalchyk has also handled, as lead counsel, numerous patent litigation matters in arbitration, including cases in the areas of portable hand tools and irrigation products.

Co-Counsel

The Toro Company and eXmark Mfg. Co., Inc. v. Scag Power Equipment, Inc. and Metalcraft of Mayville, Inc.; Civil Action No. 8:01CV279 (D. Neb.)

Mr. Kowalchyk represented the plaintiffs, Toro and eXmark, in a patent infringement case involving commercial lawn mowers. The case settled after several summary judgment rulings in favor of plaintiffs, and included a finding of no inequitable conduct in patents-in-suit.

The Toro Company v. Grizzle & Hunter Plastic, Inc.; Civil Case No. 95-8214 (S.D. Cal.)

Mr. Kowalchyk represented plaintiff in a trade secret infringement action against former employee's use of trade secrets for irrigation devices. Mr. Kowalchyk's responsibilities included discovery, expert work, and pretrial activities. The case settled near close of discovery with injunction limiting defendant's activity and recovery of damages by Toro.

The Toro Company v. Moridge Manufacturing, Inc.; Civil Action No. 4-93-279 (D. Minn.)

Mr. Kowalchyk represented plaintiff in a patent infringement case regarding lawn mower equipment. Mr. Kowalchyk's responsibilities included discovery, motion practice, expert work, and pretrial activities. The case settled near trial, with Final Consent Judgment finding infringement, valid patents, and significant monetary recovery by Toro.

Honeywell Inc. v. Minolta Camera Co. Ltd. and Minolta Corp.; Civil Action Nos. 87-4847, 88-1624 (D. N.J.)

Mr. Kowalchyk represented plaintiff in this patent infringement case involving autofocus camera technology. Mr. Kowalchyk's responsibilities included all aspects of conducting discovery, including depositions in Japan, and expert witness work; Mr. Kowalchyk was a member of the trial team that secured a jury verdict of patent infringement and $90+ million damages for Honeywell.

R.G. Barry Corporation and Vesture Corporation v. Domino's Pizza, Inc. and Phase Change Laboratories, Inc.; Civil Action No. 1:98CV00802 (D. N.C.)

Mr. Kowalchyk represented plaintiffs in a patent infringement case regarding heated pizza delivery bags. The case also involved false advertising in connection with Domino's "Heat Wave" promotion. Mr. Kowalchyk's responsibilities included discovery, motion practice, expert work, and pretrial activities. The case settled, with Consent Judgment of validity, infringement, injunction and substantial monetary recovery to plaintiffs.

The Toro Company v. K-Rain Manufacturing Corporation and Carl L.C. Kah, Jr.; Civil Action No. 96-0530 (C.D. Cal.) and Carl L.C. Kah, Jr. and K-Rain Manufacturing Corporation v. The Toro Company; Case No. 95-8112 (M.D. Fla.)

Mr. Kowalchyk represented Toro in patent infringement cases regarding irrigation equipment in which Toro was accused of patent infringement. Mr. Kowalchyk's responsibilities included discovery, motion practice, expert work, and pretrial activities. The cases were consolidated and shifted to arbitration, where Mr. Kowalchyk co-tried the case and obtained a decision that no products infringed any asserted patent.

Chuck Blore & Don Richman, Inc. v. 20/20 Advertising, Inc. and Duling Optical Corporation; Civil Action No. 4-87-581 (D. Minn.)

Mr. Kowalchyk represented plaintiffs in a copyright and unfair competition case regarding television commercials for eyeglasses. Mr. Kowalchyk's responsibilities included discovery, motion practice, expert work, and pretrial activities. The case was settled shortly before trial with substantial monetary recovery to plaintiffs.

Vermeer Manufacturing Company v. The Charles Machine Works, Inc.; Civil Action No. 4-98-CV-80352 (D. Iowa) and The Charles Machine Works, Inc. v. Vermeer Manufacturing Company; Civil Action No. 4-00-CV-80686 (D. Iowa)

Mr. Kowalchyk represented Vermeer in these consolidated patent infringement cases involving directional boring equipment. Mr. Kowalchyk's responsibilities included discovery, motion practice, expert work, and pretrial activities. The cases were settled. During the cases, Mr. Kowalchyk obtained a Federal Circuit decision in favor of Vermeer's claim interpretation on Vermeer patent.

SAMPLE FEDERAL COURT APPELLATE EXPERIENCE  

Larson Manufacturing Company of South Dakota, Inc. v. AluminArt Products Limited and ChamberDoor Industries, Inc.; Appellate Case No. 2008-1096, 01174 (Federal Circuit)

Mr. Kowalchyk was lead counsel for AluminArt on appeal in a patent infringement case in which determination of unenforceability was affirmed in part, reversed in part, and remanded for further consideration.

Vermeer Manufacturing Company v. The Charles Machine Works, Inc.; Appellate Case No. 00-1119 (Federal Circuit)

Mr. Kowalchyk was lead counsel for Vermeer on appeal in a patent infringement case in which the summary judgment regarding claim interpretation appealed by Mr. Kowalchyk's client was vacated and remanded.

Deere & Company v. The Toro Company; Appellate Case No. 02-1136 (Federal Circuit)

Mr. Kowalchyk was co-counsel on the appeal for Toro in this patent infringement case.

Rain Bird Sprinkler Mfg. Corp., Rain Bird Sales, Inc., Camsco Manufacturing Corp. and Anthony Manufacturing Corp. v. The Toro Company; Appellate Case No. 93-1493 (Federal Circuit)

Mr. Kowalchyk was co-counsel on the appeal for Toro in this patent infringement case.

Animal Fair Inc. v. Amfesco Industries, Inc.; Eighth Circuit Appeal No. 85-5260 (Eighth Circuit)

Mr. Kowalchyk was co-counsel on the appeal for Animal Fair in this trademark and unfair competition case.

The Toro Company v. R & R Products Co.; Eighth Circuit Appeal No. 85-5240 (Eighth Circuit)

Mr. Kowalchyk was co-counsel on the appeal for Toro in this copyright, trademark and unfair competition case.