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Alan W. Kowalchyk

Partner

“I'm a goal-oriented problem solver for my clients' intellectual property matters, which many times involves enforcing their patent rights or resolving issues presented by their competitors' patents.”

Contact Me
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3200 IDS Center
80 South Eighth Street
Minneapolis, MN  55402

tel: 612.332.5300

fax: 612.332.9081

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Contact My Assistant

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Post-Grant Patent Proceedings: The Limited Scope of Additional Discovery

Now that the America Invents Act has been fully implemented, patent office trial proceedings to challenge the validity of issued patents have commenced. 

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What To Consider Before Using Inter Partes Review

Law360 March 22, 2013 by Alan W. Kowalchyk

The America Invents Act created four new post-grant trial-like procedures for challenging patent validity in the United States Patent and Trademark Office. These new patent validity challenge procedures are similar in some respects to district court litigation, but they all have their own substantive and procedural requirements under the AIA and rules adopted by the patent office.

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USPTO Post-Grant Patent Review: More Cost Effective Patent Dispute Resolution

The attached presentation describes the applicable patent office procedures for post grant proceedings under the American Invents Act.

America Invents Act of 2011

The attached presentation summarizes both the new prior art and litigation related provisions of the American Invents Act.

The M&G Edge: America Invents Act Now Fully Implemented

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Available Patent Office Post-Grant Review Procedures

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Overview

In summing up his years of experience, Alan describes himself simply as a problem solver for his clients' intellectual property concerns. He helps his clients successfully meet their business goals in intellectual property matters, whether those goals involve litigation, alternative dispute resolution, counseling and strategy, or portfolio analysis.
 
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, patent appeals, and reexaminations. He is a frequent speaker on and writer on the new America Invents Act provisions regarding post grant procedures to challenge and defend the validity of patents in the patent office. He 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. Alan has achieved an AV peer review rating by Martindale-Hubbell.
 
Alan's areas of technical experience include immunology, microbiology, genetic engineering, food science, applied chemistry, pharmaceuticals, medical devices, and commercial and consumer products.
 
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 enjoys traveling, as well as boating and fishing at his cabin on the lake.

 

Education

Hamline University
J.D., cum laude, 1981
 
University of Wisconsin-Madison
M.S., Food Science, 1977
B.S., Natural Science/Microbiology, 1976

 

Bar and Court Admissions

The Supreme Court of the State of Illinois, 1987
United States Court of Appeals - Federal Circuit, 1986
United States Court of Appeals 8th Circuit, 1985
United States Patent and Trademark Office, 1984
United States District Court - Minnesota, 1982
The Supreme Court of the State of Minnesota, 1981
 

Professional Affiliations

Minnesota State Bar Association
Federal Circuit Bar Association
American Bar Association
American Intellectual Property Law Association
Minnesota Intellectual Property Law Association
Intellectual Property Owners Association
 
Minnesota Advisory Committee on Genetically Altered Organisms
   Past chair
Minnesota Solid Waste Advisory Committee
   Past member

Representative Cases

Litigation Experience—Lead Counsel

Park Industries, Inc. v. Diatool LLC; Civil Action No. 13-4753 (N.D. Ill). Mr. Kowalchyk was lead counsel representing plaintiffs in a patent infringement case regarding stone-fabrication machines.  Mr. Kowalchyk successfully settled the case and the defendant agreed to cease and desist from further sale and offer for sale of the infringing product.
 
Park Industries, Inc. v. EuroStone Machine USA; Civil Action No. 12-2929 (SC). Mr. Kowalchyk was lead counsel representing plaintiffs in a patent infringement case regarding stone-fabrication machines.  Mr. Kowalchyk successfully settled the case and the defendant agreed to cease and desist from further sale and offer for sale of the infringing product.
 
Wausau Paper Towel & Tissue, LLC v. Nittany Paper Mills, Inc.; Civil Action No. 12-2477 (Middle D. PA). 
Mr. Kowalchyk was lead counsel representing plaintiffs in a patent infringement case regarding paper roll technology.  Mr. Kowalchyk successfully settled the case with the defendant agreeing to cease and desist from further manufacture, use, and sale of the infringing product.
 
Wausau Paper Towel & Tissue, LLC v. Murphy Supply Co.; Civil Action No. 11-0854 (S.D. OH). Mr. Kowalchyk was lead counsel representing plaintiffs in a patent infringement case regarding paper roll technology.  Mr. Kowalchyk successfully settled the case with the defendant agreeing to cease and desist from further manufacture, use, and sale of the infringing product.

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.
 
Litigation Experience—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 favorable decision.
 
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.
 
Representative 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.

Awards & Recognition

Selected for inclusion in Minnesota Super Lawyers, 2008-2013

AV peer review rating by Martindale-Hubbell

Publications & Speaking

Speaker at IP Strategy Summit in New York City on November 12, 2013 on the topic Your Post-AIA IP Strategy.
 
Panelist at Hamline University Law School, Hot Topics in Business Law, September 29, 2013 on the topic Licensing Intellectual Property
 
Post-Grant Patent Proceedings: The Limited Scope of Additional Discovery, BNA's Patent, Trademark & Copyright Journal®, August 16, 2013
 
 
Panelist at Law Week Colorado, State Bar Colorado, and Merchant & Gould, October 23, 2012 on the topic: The America Invents Act & Patent Litigation.

Panelist at Hamline University Law School, Hot Topics in Business Law, October 1, 2012, on the topic: The Leahy-Smith America Invents Act and what the recent changes mean to U.S. patent law.
 
Panelist at University of Washington: High Technology Protection Summit on July 27-28, 2012 on the topic: Document Retention Policies and E-Discovery after Rambus.
 
The American Invents Act: Key Provisions Affecting Inventors, Patent Owners, Accused Infringers and Attorneys, ABA roundtable presentation, December 7, 2011
 
Presenter, LexisNexis webinar, Considerations Under the America Invents Act (AIA), November 29, 2011.
 
Panelist at University of Washington: High Technology Protection Summit 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. 
 
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.
 
Facts and Myths of Patent Re-Examinations, Law360, Intellectual Property (January 15, 2010)
 
Using Arbitration to Solve Intellectual Property Disputes, MSBA Webcast CLE presenter (August 2007)
 
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)
 
The Inequitable Conduct Defense Lives On: 2003 Federal Circuit Decisions and Their Impact
The John Marshall Review of Intellectual Property Law - September 2004

Alternative Dispute Resolution

State of Minnesota Qualified Neutral for adjudicative services and mediation

Member of the American Arbitration Association's National Panel of Neutrals

Member of the World Intellectual Property Organization's list of Arbitrators and Mediators
 

Patent Experience

Patent infringement and validity assessment
Patent portfolio management
Patent opinion writing
All phases of patent prosecution
Patent appeals and reexaminations

Teaching

Adjunct professor, William Mitchell College of Law

Quoted

5 Tips For Winning USPTO Review Under AIA, Law360, September 13, 2013, by Ryan Davis

Sweeping patent law changes take effect, minnlawyer.com, September 24, 2012, by Jane Pribek