Ernest W. Grumbles III

612.336.4601  |  Email  |  vCard  |  Biography

Minneapolis Office
3200 IDS Center
80 South Eighth Street
Minneapolis, MN
55402 USA

ph: 612.332.5300
fax: 612.332.9081

Assistant:

Carol Hough
chough@merchantgould.com
612.371.5257

Education

Bar Admissions

Professional Affiliations

Media Sites

Recent Podcasts

Quoted

Interviews

Recent Articles

Recent Presentations

Ernest is a trial attorney and has handled numerous intellectual property disputes in federal courts around the United States, including patent litigation related to semiconductor wafer inspection tools, medical devices and electronic gaming equipment, and trademark enforcement for national consumer brand companies. Ernest just second-chaired a four-week patent infringement trial in spring 2009 in the District of Minnesota for a wafer inspection client, handling several witnesses on direct and cross-examination, including damages experts. The matter, still pending, resulted in a jury verdict for the client in excess of $6 million and a rejection of defendant's invalidity allegation. Ernest was co-lead counsel in a copyright infringement lawsuit related to the Baltimore Ravens Super Bowl ring, a matter which settled favorably on the eve of trial. While practicing on the Texas-Mexico border, Ernest was first-chair defense counsel in a federal narcotics conspiracy trial and also argued before the Texas Court of Appeals.

IP/innovation counseling and portfolio development are also important parts of Ernest's practice. He is a strategic IP counselor to several startup and early-stage enterprises, assisting them in recognizing IP assets and developing a pragmatic approach to protect and enforce those assets. Current technology focuses include interactive web applications, location- and mobile-based services, green-tech food/drug coatings and IC/wafer inspection. Ernest is currently working on an initiative to promote innovation in Minnesota.

Ernest is active in social media, including as co-host of BP/G Radio, a intellectual property podcast found at http://www.bpgradio.com/. He also posts on new IP, technology and startup developments on twitter (www.twitter.com/ernestgrumbles). Ernest regularly speaks and writes on patent and trademark issues, including recent presentations on cybersquatting, trademark surveys and changes to PTO rules on examination of claims and continuation practice and recent articles on internet-based trademark disputes.

Ernest has achieved an AV peer review rating by Martindale-Hubbell.

Education

Boston College
B.A., Political Science, magna cum laude, 1989

University of Wisconsin-Madison
J.D., with honors, 1995

Judicial Clerk, Honorable Reynaldo G. Garza, U.S. Court of Appeals for the Fifth Circuit, 1995-1996

Bar Admissions

Texas, 1995
Wisconsin, 1995
Minnesota, 1997
U.S. District Courts - D. Minn.; W.D. Wis.; E.D. Wis.; E.D. Texas; S.D. Texas; N.D. Fla.
U.S. Courts of Appeals - Federal; 8th; 5th

Professional Affiliations

Media Sites

bp/g radio - IP podcast - www.bpgradio.com

ernest's twitter feed: www.twitter.com/ernestgrumbles

Recent Podcasts

IP Under Oath: A Visit with Brandi Bigalke, Court Reporter, December 14, 2009 View

IP on the Bench: A Chat with U.S. Magistrate Judge Arthur Boylan, October 15, 2009 View 

SEO and Internet Search Patents: A Chat with Bill Slawski, July 20, 2009 View

I Words - the Intersection of Insurance and IP, June 5, 2009 View

Pharma and Biotech in The Current Economy: Survival of the Fittest, May 21, 2009 View

James Bond with Books: Why You Need a Literary Agent, March 20, 2009 View

Domain name auction company sued over sham bids by Sheri Qualters
The National Law Journal - November 2009 View

Facebook Members to Become Masters of Their Domain Names, By Renay San Miguel.
TechNewsWorld - June 2009 View

Wall Street Firms In A Trade Secrets State Of Mind, By Jesse Greenspan
IPLaw360 - May, 2008 View

Interviews

http://marketplace.publicradio.org/display/web/2009/07/30/pm-podcast/

Recent Articles

Fear and Trembling - Or Not: Thoughts on the VoloMedia Podcasting Patent, August 25, 2009 View

Verizon's Holiday Present - A $33 Million Judgment Against a Cybersquatter
namesmash website - January 2009 View

FTC 404's Canadian Domain Scammers
namesmash website - August 2008 View

Downfall of the Rogue Registrar: Lessons from the Dell Case
namesmash website - June 2008 View

Co-author of The Inventor Who Died and Other Mysteries - Resolved
Intellectual Property Today - January 2008 View

Co-author, with William D. Schultz, of Issues in Keyword Advertising
IP Law360 - December 2006

Co-author of Trademarks on the Internet: An Update on Metatags, Sponsored Links, and Pop-up Advertisements
The IP Book - October 2006 View

Co-author of Protective Orders: An Evolving Balancing Act
The Patent Lawyer - Spring 2006 View

Recent Presentations

Clean and Green: A Sensible Approach to IP Protection for New Energy Innovation
Energy Synergy: Melding the Green Economy and the Law (December 8, 2009) 

"IP Crash Course for Startups" February 17, 2009 - Carlson School of Mgmt.- Ventures Enterprise (Univ. of Minn.) 

"Trademark Surveys: How to Use Them . . . Wisely" September 28, 2007, with David Prange

"PTO Final Rules Continuations/Claims" Merchant & Gould Boardroom, September 14, 2007, with Mark Skoog

"Understanding the Miscellaneous Changes to Trademark Trial and Appeal Board Rules" Merchant & Gould Boardroom, August 17, 2007, with Scott Johnston

"Trademark Damages Update" Midwest Intellectual Property Institute, September 25, 2006, with Laura J. Hein and Lora Esch Mitchell

"Proposed PTO Rule Changes: Continuations and Claim Examination" Merchant & Gould Boardroom, April 25, 2006, with Mark Skoog

"Proposed Changes to TTAB Practice" Merchant & Gould Webinar (national), March 15, 2006, with Scott Johnston

"Trademark Infringement Damages - Recent Developments," FBA-Minnesota (IP Litigation Section), February 9, 2006, with Lora Esch Mitchell and Laura Hein