Daniel W. McDonald,  Attorney
		612.336.4637  |  Email  |  vCard Minneapolis Office 3200 IDS Center 80 South Eighth Street Minneapolis, MN 55402 USA ph: 612.332.5300 fax: 612.332.9081

Education

University of Minnesota
B.S.E.E., high distinction, 1982

University of Minnesota
J.D., magna cum laude, 1985

Bar Admissions

Minnesota State and Federal Bars, 1985
U.S. Patent and Trademark Office, 1986
U.S. Courts of Appeal for the Seventh, Eighth, Tenth and Federal Circuits
U.S. Supreme Court

Professional Affiliations

Minnesota State Bar Association
Past President, Computer Law Section

Minnesota Intellectual Property Law Association
Past Chair, Litigation/CAFC/ADR Committee

University of Minnesota Institute of Technology Alumni Society
Past President

Minnesota Alumni Chapter of Tau Beta Pi
Founder and Past President

University of Minnesota Alumni Association
Marketing Committee

Dan has won trials, secured expedited relief, and succeeded in securing multi-million dollar awards for his clients. He has represented clients ranging from individual inventors to the British Post Office, in cases involving a broad spectrum of technologies, from software, digital imaging, telecommunications and electronics to apparel, aerospace, printing, and materials handling. He has obtained an "exceptional" case finding after trying a patent case to verdict, obtaining attorneys' fees and punitive damages affirmed on appeal. Dan's practice areas include: Patent litigation, copyright litigation, trademark/trade dress litigation and trade secret litigation with an emphasis on electronics, software, and Internet issues. Dan serves on Merchant & Gould's Executive Committee.

Dan has been recognized by Chambers USA as one of the Leading Individuals in IP Litigation in Minnesota and is a Minnesota Law & Politics Super Lawyer. He has also achieved an AV peer review rating by Martindale-Hubbell.

Selected Articles, Treatises, and Presentations Authored

Beyond Rule 11: The Case For Full Early Assessment
Co-authored with Joseph E. Lee, IP Law 360 - December 4, 2007

Copyright Infringement: Risks Are Increasing Online
Forbes - April 18, 2005

The power of patent reexams: An underused weapon in the accused infringer's arsenal
The Patent Lawyer - May 2004
APLF Roundtable - 2004

Practical and Legal Issues in Utilization of Non-attorney Technologists: A Litigation Perspective
2004 AIPLA Spring Meeting Presentation

Smart Pills: Setting Rules After Rambus
IP Law & Business - October 2003

Presentation on Trade Dress Protection in the Wake of the Supreme Court's Traffix Decision
APLF Roundtable - July 2003

Protect the Better Mousetrap
Minneapolis Star Tribune - January 2003

Trade Dress Law
Aspen Law & Business (chapter regarding litigation from plaintiff's perspective)

Various Seminars Including

Patent Litigation, Chair of Program for MIPLA

Hosted ABA - IP Section Roundtables on doctrine of equivalents, trademark damages, fair use, and other topics

Presentation on Internet IP issues including domain name protection (various groups)

Copyright authorship/ownership (MSBA)

Software patents (Minnesota CLE)

Increased royalty damages for patent infringement (AIPLA)

Trade dress

Recent Cases

Advantus Capital Management et al. v. Aetna, Inc., (0:06-cv-02855, D. Minn., Judge Rosenbaum). Represented plaintiff owner of ADVANTUS trademark for investment-related services. Moved for preliminary injunction to stop Aetna from using ADVANTUS for health plan-related services. Secured immediate and complete preliminary injunction in August 2006.

Mostly Memories, Inc. v. For Your Ease Only, Inc., QVC, Inc. et al. (1:05-cv-07058, N.D. Ill., Judge Castillo). Represented several defendants as lead counsel in case involving 47 claims of copyright infringement and other claims including breach of contract, unfair competition, trade secret misappropriation, breach of fiduciary duty, etc. After deposing president of plaintiff, plaintiff acknowledged its claims had no merit and, in May 2006, voluntary dismissed, with prejudice, all its claims against all parties, leaving defendants to pursue their counterclaims. A fee petition is pending.

Primevest Financial Services, Inc. (division of ING) v. Partnervest Financial Group, Inc. (0:05-cv-189, D. Minn., Judge Tunheim). Represented plaintiff asserting infringement of PRIMEVEST trademark. Following depositions of the executives of defendants, defendants agreed to stop using the PARTNERVEST mark and the case settled.

National Graphics, Inc. v. Travel Tags, (04-cv-0023, E. D. Wis., Judge Adelman)

Represented defendant in case involving five patents for digital imaging technology. Case settled after Markman hearing involving special master.

Represented client regarding 50+ patent portfolio of Ronald A. Katz Licensing, LLP, related to automated telephone answering systems.

For Your Ease Only, Inc. v. Calgon Carbon Corp., et al. (02-c-7545, N.D. Ill., Judge Andersen). Represented declaratory judgment plaintiff against patentee and related entities, seeking to have patent declared invalid and not infringed, and seeking damages for interference with business and other claims. Secured $2 million-plus default judgment against 2 of 3 defendants. Brought reexamination of patent-in-suit, eliminating all past damages and assisting inequitable conduct defense. Case stayed pending patentee's appeal of final rejection at U.S. Patent and Trademark Office (PTO). Also won motion before court in Chicago piercing attorney-client privilege for prima facie fraud at the PTO.

Lead counsel in software license dispute in ICC arbitration for Canadian software company and Japanese distributor.

Brandtjen & Kluge, Inc. v. Weidhaas Group Corp., (04-3421, D. Minn., Judge Tunheim). Represented plaintiff in trade dress case involving printing presses. Case settled favorably.

Protel, Inc. v. Gateway Cos., Inc. and Gavel & Gown Software (No. C 301-443, S.D. Ohio, Judge Rose). Represented defendants in patent infringement case involving software. Case resolved favorably following settlement and denial of plaintiff's motion to reopen dismissed action.

Reg Oklahoma (later Advanced Card Technologies div. of General Patent Corp.) v. Taylor Corp., (No. Civ-02-981-T, W. D. Okla., Judge Thompson). Represented defendant in patent infringement and trade secret case involving two patents on phone cards. Case stayed pending reexamination in which all reexamined claims of the original patents were rejected, eliminating past damages. After stay lifted, case settled following deposition of inventor regarding declarations filed at PTO.

Jeff Anderson and www.mnschools.com v. Advanced Access, Inc., et al., (03-2908, D. Minn., Judge Rosenbaum). Represented defendant in copyright infringement case involving website framing. Case settled during summary judgment motion hearing.

Digital Replay, Inc. v. Travel Tags, Inc. (D. Minn. Judge Davis). Represented declaratory judgment plaintiff in patent case involving lenticular printing. Claims included claim for equitable ownership of defendant's patent. Settled while summary judgment motions pending.

Other Cases of Note

B.F. Goodrich and Rosemount Aerospace v. Auxitrol SA. and Esterline Technologies (00-cv-43, D. Minn., Judge Davis). Represented plaintiffs in trade dress case involving total air temperature sensors for jets. Defeated motion to dismiss for lack of jurisdiction despite no sales of infringing product in forum state. Case settled favorably.

Compression Labs v. Jasc Software et al. (2:04-cv-158, E.D. Tex., Judge Folsom). Represented one of several defendants in patent case involving image compression technology. Case settled favorably.

Susan Maxwell v. J. Baker Meijer Inc., Pamida, Angel-Ettes of California, Dollar General, Family Dollar, et al. Represented individual inventor of patented shoe connection system used on billions of dollars worth of shoes sold at discount stores. Secured several seven-figure licenses and settlements following litigation efforts over several years including two jury trials which returned willful infringement verdicts and exceptional case findings leading to enhanced damages and attorney fees recovery.

Malt-O-Meal v. Quaker and Rubbermaid (3-96-cv-104, D. Minn., Judge Magnuson). Represented plaintiff in tortuous interference/unfair competition case. Following jury verdict (in excess of actual damages requested) of $9.2 million, and second trial resulting in $22.5 million verdict for punitive damages, case settled favorably.

M.I.T. v. Jasc Software et al. (5:01-cv-344) E.D. Tex., Judge Folsom). Represented one of several defendants in case involving color printing patent. One of three counsel presenting argument on behalf of dozens of defendants at Markman hearing. Case settled favorably after Markman hearing.

Have represented Calvin Klein Cosmetics Corp.'s OBSESSION^® perfume and Major League Baseball/Minnesota Twins in matters involving preliminary injunctions and Temporary Restraining Orders (TROs) including John Doe TRO during World Series.

The (British) Post Office vs. Portec Inc., (D.Col. Judge Finesilver, trial conducted by Judge Seay of Oklahoma, sitting by designation). Represented plaintiff in trade secret misappropriation jury trial against Colorado-based defendant in Colorado. Judgment entered on jury award of $1.5 million+ in compensatory and punitive damages. Court also awarded attorney's fees as "exceptional case." Appeal remitted part of punitive damages award as excessive, and affirmed all other aspects of award.

Represented clients in litigation, evaluations of patent infringement, evaluations of licensing potential, and advising on enforcement strategies regarding patents, trademarks, and copyrights involving: expert systems software, computer operating systems, Internet-related software systems, apparel, color merchandising systems and aids, database generating and searching systems, ethanol production, heaters, snowblowers, financial newsletters.