Andrew J. Lagatta

Partner
Minneapolis
3200 IDS Center, 80 South Eighth Street
Minneapolis, MN 55402
D: 612.371.5383
Contact My Assistant
Denise Chamberlin
D: 612.336.4692

Education

University of Minnesota Law School
    J.D., cum laude, 2005
    Editor, Minnesota Journal of Law, Science & Technology

University of Wisconsin - Madison
    B.S. Electrical and Computer Engineering, 2001

Bar and Court Admissions

U.S. District Court, District of Minnesota
U.S. Patent and Trademark Office
Minnesota State Bar

Professional Affiliations

American Bar Association
Minnesota State Bar Association
American Intellectual Property Law Association
Minnesota Intellectual Property Law Association
Institute of Electrical and Electronics Engineers
Association of Computing Machinery

Awards & Recognition

Selected for inclusion in Minnesota Rising Stars, 2012, 2014-2015

Publications & Speaking

Overcoming the Differences in Patent Practice between Japan, the US, and Europe, Speaker, October 2016

Inter Partes Review: Current Thinking on What, When, Why, and How Much, Speaker and Moderator, September 2016

New PTAB Rules, New Key Cases and Emerging Trends – Strategic Implications for PTAB Proceedings and Appeals (with Rachel Hughey), Speaker, Midwest IP Institute, September 2016  PowerPoint  |  Article

Cyberworld: Protecting Your Brand in Cyberspace, Speaker, April 2016

Staying Current in Inter Partes Review: Developments, Hot Topics, and What's Next?, Panelist, February 2016

Surviving the Patent Killer: Navigating Post Issuance Proceedings, March 2015 (presenter)

Inter Partes Review: Strategies and Considerations for Use, October 2014 (presenter)

How Inter Partes Review Became A Valuable Tool So Quickly, Law360, co-authored with George C. Lewis, August 16, 2013

Leveraging New Patent Office Post Grant Proceedings To Decrease Litigation Risk and Cost, Intellectual Property Today, co-authored with Joe Lee and Rob Kalinsky, July, 2013

The America Invents Act, Continuing Legal Education, October 2011 (presenter)

The America Invents Act: Future Provisions, Continuing Legal Education, October 2011 (presenter)

Intellectual Property Counseling and Litigation Treatise, Counseling in the Foreign Setting, Matthew Bender, 2009 (update co-author/editor)

As an intellectual property lawyer who focuses on a wide range of patent matters, Andrew (Andy) enjoys working with large companies to help develop and enforce patent portfolios, as well as start-up companies and individual inventors who have good ideas but need a forward-thinking legal strategy that allows them to protect R&D investment and attract investors.

As chair of M&G’s post-grant practice group, Andy is well-versed in all aspects of post-grant patent challenge proceedings, including reexamination and post-grant trial proceedings, as well as PTAB appeals and reissue applications. Andy has been named counsel (lead and backup) in over twenty PTAB trials, on behalf of both patent owners and petitioners. These trials have spanned various technology areas, from semiconductors and circuits, to medical devices, to agricultural equipment and environmental products, to food science. Andy has also managed reexamination proceedings (ex parte and inter partes) representing both patentees and accused infringers.

Andy also serves as vice-chair of Merchant & Gould’s electrical and software practice group and has extensive patent prosecution and counseling experience. Andy provides intellectual property counseling, analyzes patentability and clearance issues, and drafts and prosecutes patent applications. He has technical experience in diverse electrical, electronic, and mechanical technology fields, including computer architecture, electronic control systems, medical devices, communications networks and protocols, power distribution systems, database management systems, operating systems, digital content encryption and distribution, and business methods. As part of that practice, Andy has successfully created IP protection strategies for several start-up companies that match the company’s growth goals and timing and has developed licensed patent portfolios for established companies.

Andy also has litigation experience in a number of cases associated with software systems and has developed numerous infringement, validity, and enforceability positions, as well as preparing briefs and pleadings.

Prior to practicing law, Andy worked for Intel Corporation, where he focused on desktop computer architecture modeling and performance analysis. This experience has helped him in understanding technology issues, as well as day-to-day schedules of inventors and patent counsel, and what they want and need in intellectual property protection.

At Merchant & Gould, Andy also does pro bono work for non-profit organizations as well as for low-income inventors through the LegalCORPS Inventor Assistance Program. He runs, plays golf, goes to concerts, and brews beer in his limited spare time.

Representative Cases

Represents maker of remote medical monitoring devices accused of infringement of twelve patents in ongoing inter partes review proceedings, inter partes reexamination proceedings, and ex parte reexamination proceedings, leading to rejection and ultimate invalidation of numerous claims across the asserted patents.

Represents agricultural equipment maker in inter partes reviews of four patents asserted in litigation associated with harvesting equipment; case ongoing.

Represents environmental products company in inter partes reviews of two patents asserted in litigation associated with papermaking technologies; case ongoing.

Represented milling company defending patent validity in inter partes review challenging validity of asserted patent directed to food processing and associated food products; case settled before final written decision preserving validity of asserted patent.

Represented maker of procurement software accused of infringing three patents in inter partes reexamination and ex parte reexamination proceedings, leading to invalidation of claims across the asserted patents.

Represented consumer electronics company defending patent validity in inter partes review challenging validity of asserted patents directed to graphics technologies; case settled.

Manages U.S. prosecution of large portfolio of pending applications for an international electronics and electrical equipment company, focusing on printing, scanning, and networking technologies.

Directs prosecution of portfolio of patent applications directed to personal information manager data synchronization, supporting licensing program for major software provider.

Developed portfolio of U.S. and international patents for startup power grid electronics company, including over a dozen issued U.S. patents and corresponding international patents and applications.

Prepares and prosecutes patent applications in the area of computing system virtualization, security, database management, and cloud networking integration for large information technology company.


MEDIA CENTER

All Media
Events
9/27/16
Inter Partes Review - Current Thinking on What, When, Why, and How Much
Tuesday, September 27, 2016 4:00 p.m. - Registration & Refreshments 4:30 p.m. - Presentations 5:00 p.m. - Panel Discussion 6:00 p.m. - Social HourNow approaching the fourth anniversary of the inter partes review process (which became effective September ...
Events
9/22/16
Merchant & Gould Attorneys Present at Midwest IP Institute
Rachel Hughey, Scott Johnston, Andrew Lagatta, and Christopher Schulte, partners in the Minneapolis office of Merchant & Gould, will be featured presenters at the 2016 Midwest IP Institute offered by Minnesota CLE September 22 & 23, 2016 in downtown ...
Events
4/28/16
Cyberworld CLE in Madison
CYBERWORLD: Protecting Your Brand in Cyberspace Join us for a complimentary CLE focusing on Intellectual Property Law and the ever-evolving Cyberworld Thursday, April 28, 2016 CLE - 2:30-5:00 p.m. Brewery Tour & Beer Tasting - 5:00-6:00 p.m. Concert ...
Events
2/22/16
IPR CLE in Atlanta
Staying Current in Inter Partes Review –  Developments, Hot Topics, and What's Next?Since its inception as a provision under the America Invents Act, the inter partes review process has continued to evolve before the Patent Trial and Appeal ...
Events
2/10/16
IPR CLE in Boston
Staying Current in Inter Partes Review – Developments, Hot Topics, and What's Next? Since its inception as a provision under the America Invents Act, the inter partes review process has continued to evolve before the Patent Trial and Appeal Board. ...
Articles
1/21/15
M&G Team Secures IPR Win For Medtronic Against Bosch.
On January 15, 2015, Merchant & Gould secured three significant victories for Medtronic Inc., at the Patent Trial and Appeal Board (the “PTAB” or “Board”) of the U.S. Patent and Trademark Office. In the three inter partes review ...
Press Releases
12/20/13
Merchant & Gould Announces Two New Partners in Minneapolis Office
Merchant & Gould, a leading intellectual property law firm, announced today the appointment of two new partners. Rachel C. Hughey and Andrew J. Lagatta have been promoted to Shareholder. Hughey and Lagatta are both based at the firm’s Minneapolis ...
News Alerts
2/7/13
The Most Recent Changes Implemented Under the America Invents Act
This training session included an overview of the final provisions of the America Invents Act going into effect on March 16, 2013.  The primary focus was to review the numerous implications arising from the switch to a new "first inventor ...
White Papers
6/2/08
Quanta Computer v. LG Electronics: A Return to Traditional Principles of Patent Exhaustion
I.     Introduction.       The Supreme Court recently issued a unanimous opinion on the scope of the patent exhaustion doctrine in Quanta Computer, Inc. v. LG Electronics, Inc. The case has broad implications on licenses ...
Press Releases
10/3/05
Andrew J. Lagatta Joins Merchant & Gould, Minneapolis
Merchant & Gould, an intellectual property and litigation law firm, announced that Andrew J. Lagatta has joined its Minneapolis office as an associate attorney. Andrew practices general intellectual property law with an emphasis on patent prosecution and ...