Thomas J. Leach

Partner
Minneapolis
3200 IDS Center, 80 South Eighth Street
Minneapolis, MN 55402
D: 612.336.4665
Contact My Assistant
Victoria Hanson
D: 612.371.5394

Education

University of Minnesota Law School
J.D., 2001, cum laude

Iowa State University
B.S. Chemical Engineering, 1998; Omega Chi Epsilon

University College of London
Chemical engineering course work, 1997

Bar and Court Admissions

United States District for the District of Minnesota
Northern District of Illinois, 2008
Eastern District of Wisconsin, 2005
District of South Dakota, 2004
U.S. Court of Appeals for the Federal Circuit, 2003
Minnesota State Bar, 2001
U.S. Patent and Trademark Office

Professional Affiliations

Minnesota State Bar Association
Federal Bar Association
Association for Corporate Growth
American Intellectual Property Law Association

Awards & Recognition

Selected for inclusion in Minnesota Rising Stars, 2007-2012

Publications & Speaking

Trade Secrets and the AIA: The Practical Considerations of Establishing Prior User Rights by Clear and Convincing Evidence, Part 1 and Part 2, Inside Counsel, co-authored with Emily Wessels, July 16, 2015

Three Fundamentals of Drafting a Petition for Inter Partes Review, co-authored with Brian McCall, IP Law Today, April 2015

What Features Matter in a Design Patent Case?, co-authored with Paige Stradley, Law360, February 2015

To Mark or Not To Mark? Forest Group, Inc. v. Bon Tool Co. Changes the Game, Intellectual Property Today, April 2010

One Year Later: The Impact of Seagate, Intellectual Property Today, December 2008

The Latest on In Re Seagate: Are Courts Restricting Plaintiffs' Allegations of Willful Infringement?, Patent Enforcement & Defense, May 2008

As a trial lawyer, Tom knows that cases are won and lost on details. He works hard to dig for facts that may not be readily available and then develop those facts into a winning strategy for his clients. His end goal is to help his clients succeed in their businesses by protecting and defending their market space. 

Tom specializes in all aspects of intellectual property litigation, including patent, trademark, and copyright litigation. He has successfully litigated patent cases from sophisticated turf care equipment, e-commerce patents, and medical devices to adjustable dumbbells, construction tools, and retractable screen doors. He also has experience with complex class action cases dealing with chemical technologies.

At Merchant & Gould, Tom is responsible for litigation training. He has done pro bono housing work on behalf of the Volunteer Lawyers Network. In his free time, Tom likes to hunt, fish, ride motorcycles, ATVs and snowmobiles, and go downhill and water skiing.

Representative Cases

In 2013, Toro sued The Décor Group for infringement of several patents on landscape lighting. The Décor Group had been a former distributor of Toro lighting products that stopped purchasing from Toro and began importing and selling knock-offs from China. The settlement included a payment of Toro’s lost profits for all past sales and a consent judgment that includes an injunction and admission of validity.

Cooper Notification, Inc. v. Federal Signal Corp., et al., 867 F. Supp.2d 485 (D. Del. 2012).  Tom and the M&G team successfully represented Federal Signal in a patent infringement lawsuit related to a software-based, alert-notification technology.  The M&G team combined its litigation and U.S. Patent & Trademark Office experience to attack the patent on two fronts: in court and in the Patent Office.  This combined strategy allowed the M&G team to obtain summary judgment of no infringement for Federal Signal.  Additionally, the team recovered over $20,000 for Federal Signal in sanctions against the plaintiff for its discovery misconduct.

W.L. Gore & Assoc., Inc. v. Medtronic, Inc., 874 F. Supp.2d 526 (E.D. VA 2012).  Tom and the M&G team successfully represented Medtronic in a patent infringement case involving stent-graft technology where Gore claimed damages in excess of $85 million dollars. Tom’s deposition of Gore’s expert effectively prevented Gore from calling its expert to rebut Medtronic’s invalidity case.  Moreover, the M&G team was able to significantly reduce the potential damages exposure prior to trial.  The case was tried in the Eastern District of Virginia court in February 2012.  The court ruled in favor M&G’s client finding that Medtronic did not infringe the patent.

Tom is an integral part of the Merchant & Gould team that represents a leading manufacturer of commercial and residential lawn care equipment, which includes technology ranging from high-tech commercial golf course equipment to consumer yard-care equipment. Tom, along with members of the team, has successfully represented this client against major competitors.  For example, in 2010, Tom along with the M&G team, successfully resolved a multi-patent, multi-court litigation for this client.  The M&G team employed its experience in litigation and U.S. Patent and Trademark Office practice to file reexaminations to stay the litigation and strengthen its client’s position.  The Patent Office confirmed the patentability of our client’s patent claims, while rejecting the patentability of the competitor's patent claims. With this multifaceted approach, the case was resolved favorably for our client.

In 2008, Tom co-chaired a federal patent jury trial against Hasbro, Inc., one of the largest toy companies in the U.S. After a six day trial, the jury returned a verdict in favor of Tom's client. Leading up to trial, Tom and his colleague successfully defeated an inventorship challenge, won the Markman hearing obtaining a favorable claim construction, and defeated defendant's summary judgment motion on marking. Moreover, Tom successfully precluded all of defendant's prior-art invalidity defenses.

In 2005, Tom successfully defended a patent infringement action against a client by getting the case dismissed in the preliminary stages. The technology concerned construction tools for dry wall.

In 2005, Tom was an integral part of a Merchant & Gould team that successfully defended a major home improvement retailer in a trademark dispute against Home Depot, Inc. The matter was settled favorably for the firm's client.

Tom has successfully enforced patents related to selectable weight dumbbells against two competitors. The competitors were either forced to take a license or stop selling the competing product.

Judicial Clerkship

Law clerk for the Honorable Timothy J. McManus, Minnesota District Court, Dakota County

Quoted

"A Sea Change in Patent Law," Twin Cities Business, Aug. 26, 2015


MEDIA CENTER

All Media
Events
6/8/16
Perspectives on Federal Trade Secret Law: Impact of the DTSA on Your Company
For the first time ever, Congress passed legislation that federalizes trade secret law – the Defend Trade Secrets Act (“DTSA”). The DTSA, signed into law by President Obama on May 11, 2016, creates a new federal cause of action for the misappropriation ...
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
1/29/16
Protecting Snow Sports Innovations and Brands
Merchant & Gould attorneys will be presenting two sessions on protecting innovation and brands at the SnowSports Industries America (SIA) Snow Show on January 29 at the Colorado Convention Center.Held annually for 60 years, the SIA Snow Show is the largest ...
Events
9/27/15
Merchant & Gould Partners at Chief IP Council Exchange
Merchant & Gould partners Tom Leach and Peter Gergely will be participating in the 2015 U.S. Chief IP Counsel Exchange in Lost Pines, Texas September 27-29. This event is a focused opportunity to learn from corporate IP counsel what challenges they are ...
Articles
7/27/15
Trade Secrets and the AIA: The Practical Considerations of Establishing Prior User Rights by Clear and Convincing Evidence
By Tom Leach & Emily Wessels The Expansion of Prior User Rights Under 35 U.S.C. § 273 The Leahy-Smith America Invents Act (“AIA”) ushered in a new era in intellectual property law, creating new opportunities for patent holders as well ...
Press Releases
6/1/15
M&G Team Helps Solidify the Firm’s Leadership in IPR with Win for Dri-Steem
In April 2015, Merchant & Gould (M&G) continued its success in the new arena of Inter Partes Review (IPR), with two more victories on behalf of client Dri-Steem Corporation.  M&G successfully defeated—at the preliminary stage—defendants ...
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
6/25/12
Merchant & Gould Client Vermeer Manufacturing Company Wins Litigation Battle Against The Charles Machine Works
District Court Grants Motion by Vermeer Manufacturing for Summary Judgment of Non-Infringement Merchant & Gould, an intellectual property law firm, today announced that its client Vermeer Manufacturing Company has prevailed in a patent litigation battle ...
Articles
5/25/12
Twitter, Others Beat Messaging Co.'s Patent Suit
Press Releases
8/22/11
16 Merchant & Gould Attorneys Named 2011 Super Lawyers
Firm Also Recognizes Nine Rising Stars Merchant & Gould, an intellectual property law firm, today announced that 16 of the firm's attorneys are named Super Lawyers in 2011. The attorneys are recognized for excellence in intellectual property law and ...
Press Releases
7/26/10
26 Merchant & Gould Attorneys Named 2010 Super Lawyers
Merchant & Gould, an intellectual property law firm, today announced that 26 of the firm's attorneys are named Super Lawyers in 2010. The attorneys are recognized for excellence in intellectual property law and IP litigation. Each year, no more than ...
Press Releases
9/17/09
Merchant & Gould Wins Litigation Victory On Behalf of Inventor Over Toy Giant Hasbro, Inc.
Court of Appeals for the Federal Circuit Upholds Lower Court's Findings in Favor of Small Entrepreneur Merchant & Gould, an intellectual property law firm, today announced that it has won a litigation victory on behalf of its client, inventor ...
Press Releases
11/13/08
11 Merchant & Gould Attorneys Named 2009 Rising Stars by Super Lawyers®
Merchant & Gould, an intellectual property law firm, today announced that 11 of the firm's attorneys were recognized as Rising Stars by their peers according to the Super Lawyers® organization.The Rising Stars selected from Merchant & Gould ...