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Andrew J. Lagatta

he / him / his

Partner

Andrew  J. Lagatta photo

Andrew (Andy) Lagatta is an intellectual property lawyer and member of the firm's executive committee. Andy focuses on a wide range of patent matters and enjoys working with large companies to help develop strong and enforceable patent portfolios, as well as start-up companies and individual inventors who have good ideas but need a forward-thinking legal strategy to protect R&D investment and attract investors.

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.  Andy has particular expertise in areas including network security and system virtualization, as well as data storage technologies, data science (including various machine learning systems), and Internet of Things devices.  Andy’s technical background spans a range of technologies 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 developed licensed patent portfolios for established companies and has created IP protection strategies for several start-up companies that match the company’s growth goals and timing.

As former co-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 numerous PTAB trials on behalf of both patent owners and petitioners, often providing a patent office perspective to support copending litigation efforts. These trials have spanned various technology areas, including semiconductors and circuits, medical devices, mechanical devices, such as 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 uses his past litigation experience to coordinate post-grant challenges with litigation counsel in order to navigate PTAB proceedings to achieve client goals within an overall enforcement or defense strategy.

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, 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.

Manages U.S. drafting and prosecution of a significant patent portfolio for a retailer, focusing on data science, supply chain, and technology services/infrastructure technologies.

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.

Manages utility patent portfolio development for a hardware and home improvement company, focusing on elec...

  • University of Minnesota Law School, J.D., 2005,

    cum laude, Editor- Minnesota Journal of Law, Science & Technology

  • University of Wisconsin-Madison, B.S. Electrical and Computer Engineering, 2001
  • Minnesota State Bar
  • United States Patent and Trademark Office

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

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

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

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

Quoted

Quoted in Supreme Court Has Eye on IPR, Law Week Colorado, July 10, 2017

Artificial Intelligence & Machine Learning: Usage Rights & Protection Strategies, Speaker, CLE with Minnesota Association of Corporate Counsel (April 2023)

MITCHELL HAMLINE SCHOOL OF LAW, IP INSTITUTE 2021 ANNUAL SYMPOSIUM, Exploring the Boundaries of Statutory Subject Matter (April 2021), Panelist (Subject: Patent Eligibility of Artificial Intelligence)

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

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)

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

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