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As a trial lawyer, Tony has considerable experience representing clients both in the courtroom and in all aspects of litigation through trial. He is budget- and expectations-oriented, giving his clients weekly updates on their cases so they understand what has happened and what is upcoming.

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Tony specializes in Intellectual Property litigation, including patent, trademark, and copyright litigation. He has considerable experience before the Court of Appeals for the Federal Circuit and has handled patent and copyright litigation in China for multiple clients. He has developed a special expertise in patent claim construction and in right of publicity/First Amendment cases.

Tony writes regular columns on IP law for Bench &amp; Bar, as well as periodic articles for The Federal Lawyer, and gives talks on numerous IP issues.

Prior to joining Merchant &amp; Gould, Tony was a physics engineer at Argonne National Laboratory, where he was involved in numerous engineering projects associated with the study of nuclear physics. This industry experience has given him practical exposure to technology that helps him practice law, as well as an ability to relate well to his engineer and scientist clients.

At Merchant &amp; Gould, Tony serves on the benefits committee. He also does pro bono representation on behalf of women who are not receiving the alimony or child support awarded to them by the courts.

Tony spends most of his off hours with his family, traveling, playing golf, and skiing.

DePaul University College of Law, J.D., 1995, 

Hamline University, B.A. Physics, 1990, 

Tony Zeuli, Intellectual Property Attorney

he / him / his

Minneapolis

Merchant &amp; Gould, a national intellectual property (IP) law firm, is pleased to announce that the following&nbsp;attorneys&nbsp;have been included in&nbsp;The Best Lawyers in America® 2013.&nbsp;



<h3 class="wp-block-heading">Merchant &amp; Gould Best Lawyers</h3>



<ul>
<li>Jack Clifford for Intellectual Property Litigation</li>



<li>Andrew Ehard for Intellectual Property Litigation</li>



<li>Peter A. Gergely for Intellectual Property Litigation and Patent Litigation</li>



<li>Charles Golla for Copyright Law</li>



<li>Allen W. Hinderaker for Intellectual Property Litigation and Patent Litigation</li>



<li>Scott W. Johnston for Intellectual Property Litigation</li>



<li>Daniel W. McDonald for Intellectual Property Litigation and Patent Litigation</li>



<li>Christopher Schulte for Intellectual Property Litigation and Patent Litigation</li>



<li>Christopher J. Sorenson for Patent Litigation</li>



<li>Anthony R. Zeuli for Copyright Law, Intellectual Property Litigation, Patent Litigation, Patent Law and Trademark Law</li>
</ul>



“It is with great pride that we recognize the extraordinary work being done by these individuals,” said Brian H. Batzli, CEO and Managing Director of Merchant &amp; Gould.



Best Lawyers is based on an exhaustive peer-review survey in which thousands of leading attorneys throughout the country cast more than 3.1 million votes on the legal abilities of other lawyers in their specialties. Because of the rigorous and transparent methodology used by Best Lawyers, and because lawyers are not required or allowed to pay a fee to be listed, inclusion in Best Lawyers is considered a singular honor.

Merchant & Gould Attorneys Named 2013 Best Lawyers in America®

Anthony R. Zeuli Named Among Top 100 Super Lawyers in Minnesota



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Merchant &amp; Gould, an intellectual property law firm, today announced that the following attorneys in its Minneapolis office have been named 2012 Super Lawyers.



Recognized excellence in intellectual property law:



<ul>
<li>Brian H. Batzli</li>



<li>Steven C. Bruess</li>



<li>John A. Clifford</li>



<li>Brent E. Routman</li>



<li>David G. Schmaltz</li>
</ul>



Recognized for excellence in IP litigation:



<ul>
<li>Allen W. Hinderaker</li>



<li>Scott W. Johnston</li>



<li>Alan Kowalchyk</li>



<li>Daniel W. McDonald</li>



<li>Anthony R. Zeuli </li>
</ul>



Anthony R. Zeuli is also named one of the Top 100 Super Lawyers in Minnesota.



In addition, Merchant &amp; Gould is proud to announce the following attorneys are recognized as Rising Stars.



Recognized under the category of intellectual property law:



<ul>
<li>Robert A. Kalinsky</li>



<li>Andrew J. Lagatta</li>
</ul>



Recognized under the category of intellectual property litigation:



<ul>
<li>Rachel C. Hughey</li>



<li>Heather J. Kliebenstein</li>



<li>Tom Leach</li>



<li>William D. Schultz</li>



<li>Rachel K. Zimmerman</li>
</ul>



Rising Stars are attorneys 40 and under who have been practicing law for 10 years or less. They are selected annually based on nominations from other attorneys and an independent review board. No more than 2.5 percent of attorneys are selected for Rising Stars in any state.



The rigorous selection process includes a statewide survey of lawyers, independent evaluation of candidates by the attorney-led research staff, a peer review of candidates by practice area and a good-standing and disciplinary check. Each year, no more than five percent of lawyers are selected for Super Lawyers in each state.



Super Lawyers is a service of the Thomson Reuters Legal Division. Due to the rigorous and transparent methodology used by Super Lawyers, and because lawyers are not required or allowed to pay a fee to be listed, inclusion in Super Lawyers is considered a singular honor.

Merchant & Gould Announces 2012 Super Lawyers in Minnesota

Firm Also Recognizes Nine Rising Stars



<hr class="wp-block-separator has-alpha-channel-opacity"/>



Merchant &amp; Gould, an intellectual property law firm, today announced that 16 of the firm&#8217;s attorneys are named Super Lawyers in 2011. The attorneys are recognized for excellence in intellectual property law and IP litigation. Each year, no more than five percent of lawyers are selected in each state.



The rigorous selection process includes a statewide survey of lawyers, independent evaluation of candidates by the attorney-led research staff, a peer review of candidates by practice area and a good-standing and disciplinary check. In addition, Merchant &amp; Gould also announced that nine of the firm&#8217;s attorneys were recognized as Rising Stars by their peers according to the Super Lawyers® organization.



Rising Stars are attorneys 40 and under who have been practicing law for 10 years or less. They are selected annually based on nominations from other attorneys and an independent review board. No more than 2.5 percent of attorneys are selected for this prestigious honor in any state.



&#8220;We take great pride in congratulating the attorneys who have been selected for these considerable honors,&#8221; said Brian H. Batzli, CEO and managing director of Merchant &amp; Gould. &#8220;The firm is lucky to have them as part of our team.&#8221;



The following Merchant &amp; Gould attorneys have been named Super Lawyers and Rising Stars in 2011:



Denver



<ul>
<li>Gregg I. Anderson</li>



<li>Peter A. Gergely</li>
</ul>



Knoxville



<ul>
<li>John T. Winemiller</li>
</ul>



Minneapolis



<ul>
<li>Brian H. Batzli</li>



<li>Steven C. Bruess</li>



<li>John A. Clifford</li>



<li>Karen A. Fitzsimmons</li>



<li>Allen W. Hinderaker</li>



<li>Gregory C. Golla</li>



<li>Rachel C. Hughey (RS)</li>



<li>Scott W. Johnston</li>



<li>Robert A. Kalinsky (RS)</li>



<li>Alan W. Kowalchyk</li>



<li>Thomas J. Leach (RS)</li>



<li>Daniel W. McDonald</li>



<li>Brent E. Routman</li>



<li>David G. Schmaltz</li>



<li>William D. Schultz (RS)</li>



<li>Anthony R. Zeuli</li>



<li>Rachel K. Zimmerman (RS)</li>
</ul>



Super Lawyers is a service of the Thomson Reuters Legal Division based in Eagan, Minn. Due to the rigorous and transparent methodology used by Super Lawyers, and because lawyers are not required or allowed to pay a fee to be listed, inclusion in Super Lawyers is considered a singular honor.

16 Merchant & Gould Attorneys Named 2011 Super Lawyers

Merchant &amp; Gould, an intellectual property law firm, today announced that several of the firm&#8217;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 five percent of lawyers are selected in each state.



The rigorous selection process includes a statewide survey of lawyers, independent evaluation of candidates by the attorney-led research staff, a peer review of candidates by practice area and a good-standing and disciplinary check.



&#8220;In four years, we have more than doubled the number of Merchant &amp; Gould attorneys selected for this honor,&#8221; said Randy King, CEO and managing director of Merchant &amp; Gould. &#8220;We are very proud to have these outstanding individuals as part of our team.&#8221;



The following Merchant &amp; Gould attorneys have been named Super Lawyers in 2010:



<ul>
<li>Brian H. Batzli</li>



<li>Steven C. Bruess</li>



<li>John A. Clifford</li>



<li>Karen A. Fitzsimmons</li>



<li>Allen W. Hinderaker</li>



<li>Rachel C. Hughey</li>



<li>Scott W. Johnston</li>



<li>Robert A. Kalinsky</li>



<li>Alan Kowalchyk</li>



<li>Tom Leach</li>



<li>Daniel W. McDonald</li>



<li>David G. Schmaltz</li>



<li>Christopher J. Schulte</li>



<li>William D. Schultz</li>



<li>Christopher J. Sorenson</li>



<li>Anthony R. Zeuli</li>



<li>Rachel K. Zimmerman</li>
</ul>



Super Lawyers is a service of the Thomson Reuters Legal Division based in Eagan, Minn. Due to the rigorous and transparent methodology used by Super Lawyers, and because lawyers are not required or allowed to pay a fee to be listed, inclusion in Super Lawyers is considered a singular honor.

Merchant & Gould Attorneys Named 2010 Super Lawyers

Merchant &amp; Gould, an intellectual property and litigation law firm, announced the following attorneys were recognized as Super Lawyers in the August/September issue of&nbsp;Minnesota Law &amp; Politics&nbsp;magazine.



<ul>
<li>Brian H. Batzli</li>



<li>Steven C. Bruess</li>



<li>John A. Clifford</li>



<li>Charles E. Golla</li>



<li>Allen W. Hinderaker</li>



<li>Daniel W. McDonald</li>



<li>Brent E. Routman</li>



<li>Christopher J. Schulte</li>



<li>Gregory A. Sebald</li>



<li>Anthony R. Zeuli</li>
</ul>



&#8220;These are&nbsp;outstanding attorneys who continuously exceed our clients&#8217; expectations,&#8221; says CEO and managing director Randy King. &#8220;We congratulate them.&#8221;



Super Lawyers are selected annually based on nominations from other attorneys, a judging panel, and independent research on behalf of the magazine.

Merchant & Gould Attorneys Named 2006 Super Lawyers by Minnesota Law & Politics magazine

Merchant &amp; Gould, a national intellectual property (IP) law firm, is pleased to announce that the following&nbsp;attorneys&nbsp;have been included in&nbsp;The Best Lawyers in America® 2013.&nbsp;



Best Lawyers&nbsp;compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues.&nbsp; Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a&nbsp;Best Lawyers&nbsp;listing is considered an unbiased honor.



DENVER, CO



<ul>
<li>Peter A. Gergely &#8211; Litigation (Intellectual Property), Litigation (Patent)</li>
</ul>



MINNEAPOLIS, MN



<ul>
<li>John A. Clifford &#8211; Litigation (Intellectual Property), Patent Law, Trademark Law</li>



<li>Charles E. Golla &#8211; Copyright Law</li>



<li>Allen W. Hinderaker &#8211; Litigation (Intellectual Property), Litigation (Patent)</li>



<li>Scott W. Johnston &#8211; Litigation (Intellectual Property), Trademark Law</li>



<li>Daniel W. McDonald &#8211; Litigation (Intellectual Property), Litigation (Patent), Trademark Law</li>



<li>Christopher J. Schulte &#8211; Litigation (Intellectual Property), Litigation (Patent)</li>



<li>Anthony R. Zeuli &#8211; Copyright Law, Litigation (Intellectual Property), Litigation (Patent), Patent Law, Trademark Law</li>



<li>Rachel Zimmerman Scobie &#8211; Litigation (Intellectual Property)</li>
</ul>



<a href="http://www.bestlawyers.com/" target="_blank" rel="noopener">www.bestlawyers.com</a>

Merchant & Gould Attorneys Included in The Best Lawyers in America © 2016

<div class="details_summary_text">
Merchant &amp; Gould is pleased to announce that the following attorneys have been included in The Best Lawyers in America® 2017. Best Lawyers compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a Best Lawyers listing is considered an unbiased honor.
DENVER, CO
<ul>
<li>Peter A. Gergely – Litigation &#8211; Intellectual Property, Litigation &#8211; Patent</li>
</ul>
MINNEAPOLIS, MN
<ul>
<li>John A. Clifford – Litigation &#8211; Intellectual Property, Patent Law, Trademark Law</li>
<li>Charles E. Golla – Copyright Law</li>
<li>Allen W. Hinderaker – Litigation &#8211; Intellectual Property, Litigation &#8211; Patent</li>
<li>Scott W. Johnston – Litigation &#8211; Intellectual Property, Trademark Law</li>
<li>Daniel W. McDonald – Litigation &#8211; Intellectual Property, Litigation &#8211; Patent, Trademark Law</li>
<li>Christopher J. Schulte – Litigation &#8211; Intellectual Property, Litigation &#8211; Patent</li>
<li>Rachel Zimmerman Scobie – Litigation &#8211; Intellectual Property</li>
<li>Anthony R. Zeuli – Copyright Law, Litigation &#8211; Intellectual Property, Litigation &#8211; Patent, Patent Law, Trademark Law</li>
</ul>
<a href="http://www.bestlawyers.com/" target="_blank" rel="noopener">www.bestlawyers.com</a>
</div>

Merchant & Gould Attorneys Named 2017 Best Lawyers®

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in The Best Lawyers in America® 2018.



Best Lawyers compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a Best Lawyers listing is considered an unbiased honor.



DENVER, CO



<ul>
<li> Peter A. Gergely – Litigation &#8211; Intellectual Property, Litigation &#8211; Patent</li>
</ul>



MINNEAPOLIS, MN



<ul>
<li> John A. Clifford – Litigation &#8211; Intellectual Property, Patent Law, Trademark Law</li>



<li> Charles E. Golla – Copyright Law</li>



<li> Andrew S. Ehard – Litigation &#8211; Intellectual Property, Trademark Law*</li>



<li> Allen W. Hinderaker – Litigation &#8211; Intellectual Property, Litigation – Patent</li>



<li> Rachel C. Hughey – Litigation &#8211; Intellectual Property**</li>



<li> Scott W. Johnston – Litigation &#8211; Intellectual Property, Trademark Law</li>



<li> Daniel W. McDonald – Litigation &#8211; Intellectual Property, Litigation &#8211; Patent, Trademark Law</li>



<li> Christopher J. Schulte – Litigation &#8211; Intellectual Property, Litigation &#8211; Patent</li>



<li> Christopher J. Sorenson – Litigation – Patent</li>



<li> Rachel Zimmerman Scobie – Litigation &#8211; Intellectual Property</li>



<li> Anthony R. Zeuli – Copyright Law, Litigation &#8211; Intellectual Property, Litigation &#8211; Patent, Patent Law, Trademark Law</li>
</ul>



* Andrew Ehard recognized by Best Lawyers in Trademark Law for the first time this year



** Rachel Hughey recognized by Best Lawyers in Litigation &#8211; Intellectual Property for the first time this year. Also listed in Best Lawyers for the first time this year (2018).



<a href="https://www.bestlawyers.com/" target="_blank" rel="noopener">www.bestlawyers.com</a>

Merchant & Gould Attorneys Named Best Lawyers® 2018

Merchant &amp; Gould, a national intellectual property (IP) law firm, is pleased to announce that the following&nbsp;attorneys&nbsp;have been included in The Best Lawyers in America® 2019.&nbsp;



Peter Gergely, the managing partner of the New York office, received Best Lawyers®&nbsp;2019 Patent Law &#8220;Lawyer of the Year&#8221; Award in Denver.



Best Lawyers compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues.&nbsp; Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a Best Lawyers listing is considered an unbiased honor.



Atlanta



<ul>
<li>Jeff Blake (*) &#8212; Patent Law</li>
</ul>



Denver



<ul>
<li>Peter A. Gergely (2010) [10 &#8212; Litigation &#8211; Intellectual Property, Litigation &#8211; Patent</li>
</ul>



Minneapolis



<ul>
<li>John A. Clifford (2013) [5] &#8212; Litigation &#8211; Intellectual Property, Patent Law, Trademark Law</li>



<li>Andrew S. Ehard (2013) [5] &#8212; Litigation &#8211; Intellectual Property</li>



<li>Charles E. Golla (2013) [5] &#8212; Copyright Law</li>



<li>Allen W. Hinderaker (2010) [10] &#8212; Litigation &#8211; Intellectual Property, Litigation &#8211; Patent</li>



<li>Rachel C. Hughey (2018) &#8212; Litigation &#8211; Intellectual Property</li>



<li>Scott W. Johnston (2010) [10] &#8212; Litigation &#8211; Intellectual Property, Trademark Law</li>



<li>Daniel W. McDonald (2013) [5] &#8212; Litigation &#8211; Intellectual Property, Litigation – Patent, Trademark Law</li>



<li>Christopher J. Schulte (2013) [5] &#8212; Litigation &#8211; Intellectual Property, Litigation &#8211; Patent</li>



<li>William D. Schultz (*) &#8212; Litigation &#8211; Intellectual Property</li>



<li>Rachel Zimmerman Scobie (2014) [5] &#8212; Litigation &#8211; Intellectual Property</li>



<li>Christopher J. Sorenson (2013) [5] &#8212; Litigation &#8211; Patent</li>



<li>Anthony R. Zeuli (2007) [10] &#8212; Copyright Law, Litigation &#8211; Intellectual Property, Litigation – Patent, Patent Law, Trademark Law</li>
</ul>



(Year) First year the lawyer was listed in any practice area. (*) Lawyers who are listed for the first time in Best Lawyers. [#] Anniversary plaque for which lawyer is eligible (5, 10, 15, 20, 25, or 30 years).



About Best Lawyers®&nbsp;



Since it was first published in 1983,&nbsp;Best Lawyers®&nbsp;has become universally regarded as the definitive guide to legal excellence.&nbsp;Best Lawyers&nbsp;lists are compiled based on an exhaustive peer-review evaluation. 83,000 industry leading lawyers are eligible to vote (from around the world), and we have received almost 10 million evaluations on the legal abilities of other lawyers based on their specific practice areas around the world. For the 2018 Edition of&nbsp;The Best Lawyers in America©, 7.4 million votes were analyzed, which resulted in more than 58,000 leading lawyers being included in the new edition. Lawyers are not required or allowed to pay a fee to be listed; therefore inclusion in&nbsp;Best Lawyers&nbsp;is considered a singular honor.&nbsp;Corporate Counsel&nbsp;magazine has called&nbsp;Best Lawyers&nbsp;&#8220;the most respected referral list of attorneys in practice.&#8221;&nbsp; <a href="http://www.bestlawyers.com">www.bestlawyers.com</a>

Merchant & Gould Attorneys included in The Best Lawyers in America® 2019

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in&nbsp;The Best Lawyers in America©&nbsp;2020.



Best Lawyers&nbsp;compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a&nbsp;Best Lawyers&nbsp;listing is considered an unbiased honor.



<h2 class="wp-block-heading">ATLANTA, GA</h2>



Jeff Blake&nbsp;&#8211; Patent Law



<h2 class="wp-block-heading">DENVER, CO</h2>



Peter A. Gergely&nbsp;– Litigation &#8211; Intellectual Property, Litigation &#8211; Patent



<h2 class="wp-block-heading">MINNEAPOLIS, MN</h2>



John A. Clifford&nbsp;– Litigation &#8211; Intellectual Property, Patent Law, Trademark Law Charles E. Golla&nbsp;– Copyright Law Andrew S. Ehard&nbsp;– Litigation &#8211; Intellectual Property, Trademark Law Allen W. Hinderaker&nbsp;– Litigation &#8211; Intellectual Property, Litigation – Patent Rachel C. Hughey&nbsp;– Litigation &#8211; Intellectual Property Scott W. Johnston&nbsp;– Litigation &#8211; Intellectual Property, Trademark Law Daniel W. McDonald&nbsp;– Litigation &#8211; Intellectual Property, Litigation &#8211; Patent, Trademark Law Christopher J. Schulte&nbsp;– Litigation &#8211; Intellectual Property, Litigation &#8211; Patent Christopher J. Sorenson&nbsp;– Litigation – Patent Rachel Zimmerman Scobie&nbsp;– Litigation &#8211; Intellectual Property Anthony R. Zeuli&nbsp;– Copyright Law, Litigation &#8211; Intellectual Property, Litigation &#8211; Patent, Patent Law, Trademark Law

Merchant & Gould Attorneys Named Best Lawyers© 2020

The rising number of bankruptcies during Covid-19 raises a different fear for trademark licensees: Can the trademark still be used if the owner/ licensor files for bankruptcy? IP and trademark attorney Tony Zeuli, at Merchant &amp; Gould, and bankruptcy attorney Ron Roteman, at Stonecipher Law Firm, offer three steps to help minimize losing trademark rights.



Bankruptcy filings in the U.S. are rising, which is not surprising given the economic uncertainty caused by Covid-19. While many business owners are concerned about whether they will get paid for goods and services provided, trademark licensees face a different dilemma: Whether they may continue to use the trademarks they license if the owner/licensor files for bankruptcy or they suspect it might soon.



The U.S. Patent &amp; Trademark Office registered almost 400,000 trademarks in 2019 alone. That number is expected to rise in 2020. Most businesses rely on trademarks to distinguish their goods and services. Many own their trademarks outright, but others license their trademark rights from the owner, or licensor.



The Walt Disney Company is the world’s largest trademark licensor, pulling in more than $50 billion in licensed product sales in 2015, including license fees paid by others that use its trademarks. While Disney appears financially sound, other trademark licensors may not be in such enviable financial shape, especially this year.



In fact, it is highly likely that a certain number of trademark owners/licensors may seek protection under the bankruptcy laws.



<h2 class="wp-block-heading">Minimize Your Risk of Losing Trademark Rights</h2>



Here’s what you need to know and three steps you can take now to minimize the risk of losing your trademark rights.



1. First, review your trademark license agreement. While not common, some trademark licenses include language that addresses bankruptcy, often in or near the termination provision(s). For example, “in the event that either party makes an assignment for the benefit of creditors, or files a petition in bankruptcy (whether voluntary or involuntary) or for reorganization, or becomes insolvent or unable to pay its debts as they become due, then the other party&nbsp;may&nbsp;terminate this Agreement immediately upon giving notice to the other.”



In this example, were that provision enforceable in a bankruptcy case, the licensee would have the right, but not the requirement, to terminate the license agreement, stop paying the license fee, and also stop using the trademark. Assuming, however, that the licensee does not want to terminate the license and wants to continue using the trademark (or no language in the license address bankruptcy at all), the licensee should go to step number two.



2. Look to the U.S. Supreme Court’s recent decision in&nbsp;<a href="https://www.supremecourt.gov/opinions/18pdf/17-1657_4f15.pdf">Mission Product Holdings Inc. v. Tempnology LLC.</a>&nbsp;Why? Because, strangely, trademarks are not included in the Bankruptcy Code’s definition of “intellectual property.”&nbsp;<a href="https://www.law.cornell.edu/uscode/text/11/365">Section 365(n)</a>&nbsp;of the code gives most “intellectual property” (patent, copyright and trade secret) licensees the option to terminate their licenses or continue performing under them for the duration, and any extensions, even after the licensor files for bankruptcy protection and rejects the license agreement.



The Supreme Court’s decision in&nbsp;Mission Product&nbsp;clarified that trademark licensees—despite lacking express language in the Bankruptcy Code—must now be treated similar to other licensees whose contracts are rejected in bankruptcy. In other words, trademark licensees now have the option to continue using the licensed trademark (and paying the license fee) or treat the license as terminated, even if the owner/licensor rejects the license in the bankruptcy. It is the licensee’s option.



3. Third, consider making an offer to buy the trademark from the owner or the bankruptcy trustee administering the dissolution or reorganization.&nbsp;In all cases, the schedules filed together with, or following, the filing of a bankruptcy petition will include a list of all of the debtor’s property, including intellectual property such as trademarks and registrations. Even if the debtor fails to properly list its trademark, as a licensee you know that trademark rights are in fact owned by the debtor.



Depending on the type of bankruptcy and the severity of debt, the trademark may be for sale. The present value of the future license payments is one estimate of the trademark’s value. Make sure to involve your trademark lawyer too because you must make certain that you acquire&nbsp;all&nbsp;of the trademark rights, registrations and goodwill. The purchase agreement need not be complicated, but it does need to be done right since the previous owner may soon no longer exist to correct anything missed.



This column does not necessarily reflect the opinion of The Bureau of National Affairs, Inc. or its owners.



<h2 class="wp-block-heading">Author Information</h2>



<a href="https://www.merchantgould.com/Professionals/Anthony-R-Zeuli">Tony Zeuli,</a>&nbsp;a partner at Merchant &amp; Gould in Minneapolis, is a trial lawyer specializing in IP litigation, including patent, trademark and copyright.



<a href="http://www.stonecipherlaw.com/our-attorneys/ronald-b-roteman/">Ron Roteman,</a>&nbsp;a partner at Stonecipher Law Firm in Pittsburgh, is a bankruptcy lawyer concentrating in the areas of debtors’ and creditors’ rights, as well as restructuring matters.



The views of this article are those of the authors, and not the firms.



<figure class="wp-block-image"><img decoding="async" src="https://db0ip7zd23b50.cloudfront.net/dims4/default/0f479b7/2147483647/legacy_thumbnail/80x80%3E/quality/90/?url=https%3A%2F%2Fbspot-prod.bna.com%2Forca%2Fapi%2Frendition%2Fpng%2Fim260502.png%3Fdigest%3Dd775e9c5afdf5f6fb94f2c9cc4a1c15a34ab9f5e08373a148c23cedae5401411" alt="Tony Zeuli"/></figure>



<a href="/people/anthony-r-zeuli/">Tony Zeuli </a>&#8211; Merchant &amp; Gould P.C.



<figure class="wp-block-image"><img decoding="async" src="https://db0ip7zd23b50.cloudfront.net/dims4/default/6879d18/2147483647/legacy_thumbnail/80x80%3E/quality/90/?url=https%3A%2F%2Fbspot-prod.bna.com%2Forca%2Fapi%2Frendition%2Fpng%2Fim260503.png%3Fdigest%3Df431839fb9114c2c8249a97317ebcc5934c6d467201e0c86a518909cc3be825c" alt="Ron Roteman"/></figure>



Ron Roteman &#8211; Stonecipher Law Firm<button title="Back to Top">



Reproduced with permission. Published&nbsp;May 11, 2020. Copyright 2020&nbsp;The Bureau of National Affairs, Inc. 800-372- 1033. For further use, please visit&nbsp;<a href="https://protect-us.mimecast.com/s/l0MGCxklAnc1DRwWUvJki2?domain=bna.com" target="_blank" rel="noopener">http://www.bna.com/copyright-permission-request/</a>

INSIGHT: Steps to Prevent Losing Trademark Rights If the Owner Seeks Bankruptcy

12 Attorneys Were Recognized in the Minneapolis Office.



Congratulations to nine Merchant &amp; Gould attorneys in the Minneapolis office who have been named 2020 Minnesota Super Lawyers, distinguishing themselves in their legal practice.&nbsp; Only the lawyers in the top 5 percent of the total lawyers in the state were selected to the Super Lawyers list.



John Clifford was recognized for excellence in intellectual property law. Allen Hinderaker, Rachel Hughey, Scott Johnston, Heather Kliebenstein, Dan McDonald, Will Schultz, Tony Zeuli and Rachel Scobie Zimmerman were recognized for excellence in IP litigation.



In addition, Merchant &amp; Gould is proud to announce that three attorneys were recognized as 2020 Minnesota Rising Stars. Eric Chad, Michael Erbele and Paige Stradley are distinguished under the category of IP litigation. Rising Stars are attorneys 40 and under who have been practicing law for 10 years or less. They are selected annually based on nominations from other attorneys and an independent review board. &nbsp;No more than 2.5 percent of attorneys are selected for Rising Stars in any state.



Every year, Super Lawyers selects attorneys from all firm sizes and more than 70 practice areas on a state-by-state basis. &nbsp;Super Lawyers selects attorneys using a patented multiphase process, which includes evaluating them on 12 indicators of peer recognition, professional achievement and independent research.

Merchant & Gould Announces 2020 Super Lawyers and Rising Stars in Minnesota

As Published in Bloomberg Law &#8211; Contributed by Tony Zeuli, Merchant &amp; Gould P.C. and Ron Roteman, Stonecipher Law Firm



The number of bankruptcy filings in the U.S. is rising, which is not surprising given the economic uncertainty caused by Covid-19. Several of the largest recent filings include Neiman Marcus, Hertz, J.C. Penney, Chinos (J.Crew), Latam Airlines, Frontier Communications, Diamond Offshore Drilling, Centric Brands, CEC Entertainment (Chuck E. Cheese), and Quorum Health.



These filings cut across a variety of industries, including apparel and brand design and production, apparel retail and dining, travel, entertainment, and energy. Experts at the Federal Reserve and other institutions estimate coronavirus-related bankruptcies could rise by 200,000. Given the ongoing Covid-19 spikes and recent retractions of reopening plans nationwide, it would not be surprising to see these estimates rise.



Any number of issues may arise in many of the current and future bankruptcy cases that will involve stakeholders’ rights pertaining to intellectual property, including patents, trademarks, copyrights and trade secrets. In 2019 alone, the U.S. Patent &amp; Trademark Office granted over 370,000 new patents, the most ever in one year. It also registered 400,000 trademarks.



Whether you or your company is an intellectual property owner or a licensee of intellectual property, or both, planning for bankruptcy issues is prudent in these turbulent times and requires taking several steps to protect your rights. The first step is to determine whether your intellectual property agreement, if any, is an “executory contract.”



<h2 class="wp-block-heading">Executory Contracts in Bankruptcy</h2>



Section 365 of the United States Bankruptcy Code—11 U.S.C. §101 et. seq.—describes parties’ rights with what are referred to as “executory contracts.” Despite the code&#8217;s definitional section that contains approximately 85 separately defined terms, the term “executory contracts” is undefined.



Courts have grappled with whether or not a particular agreement is an executory contract and what the rights are of parties to those contracts. The majority of courts rely upon the meaning described in an oft-cited law review article that describes an executory contract as one under which the obligations of both parties are so underperformed that a failure of either one to perform would constitute a material breach.



One must also keep in mind that once an agreement is determined to be executory in nature, not all executory contracts are treated equally in bankruptcy: this is so even within the subset of intellectual property agreements (e.g., exclusive versus non-exclusive licenses). For purposes of this article, the authors are assuming that the intellectual property agreements are executory in nature, thus triggering the various provisions set forth in 11 U.S.C. § 365, as discussed below.



Additionally, there are numerous subparts of 11 U.S.C. § 365 that pertain to executory contracts generally, including intellectual property agreements. This article deals only generally with licensee and licensor rights as they pertain to intellectual property agreements that are deemed executory contracts in the context of a bankruptcy case. The article does not cover in detail all of those provisions that affect executory contracts generally, including those that also affect intellectual property agreements (e.g., the timing of when certain actions must be taken by the parties once a bankruptcy case is filed (11 U.S.C. § 365(d)), or under what conditions a debtor in bankruptcy may assume and/or assign to another party an intellectual property agreement (e.g., 11 U.S.C. § 365(b)(1)-(3)).



The second step involves determining which type of intellectual property you are dealing with because, under the Bankruptcy Code, not all are treated equally.



<h2 class="wp-block-heading">Patents, Copyrights, Trade Secrets, and Bankruptcy Code</h2>



Patents often come to mind when people hear the term intellectual property: they are perhaps the best-known. However, copyrights and trade secrets are equally powerful in different ways than patents, and may last decades longer. Under the Bankruptcy Code, all three are treated similarly, so we will do the same here. Trademarks, oddly absent from the code&#8217;s definition of the term “intellectual property,” are discussed separately below. Bloomberg Law ©2020 The Bureau of 3 National Affairs, Inc.



In 1988, Congress added a new Section (11 U.S.C. § 365(n)) to the Bankruptcy Code that specifically addressed intellectual property, and by definition excluded trademarks. The new code section was a reaction to court decisions that left unclear whether the licensee of a patent, copyright, or trade secret could continue using those rights if the owner filed for bankruptcy.



If the owner of a patent, copyright, or trade secret files for bankruptcy, the Bankruptcy Code provides the licensor two options regarding any license agreements: assume them or reject them. “Assumption” means that the owner (or trustee) will treat the license as ongoing, essentially as if nothing has changed. The licensee can continue to use those rights provided it continues to pay royalties.



However, Section 365(n) of the code is invoked if the owner of a patent, copyright, or trade secret “rejects” the license agreement in bankruptcy. “Rejection” is akin to breaching the contract. Under 11 U.S.C. § 365(n), when a patent, copyright, or trade secret licensor in bankruptcy “rejects” the license agreement, the licensee also has two options: treat the license as terminated or retain its rights and continue to use the intellectual property provided royalties are paid, assuming the license requires royalties.



If, in contrast, the licensee files for bankruptcy, it may not have the ability to continue using the licensed patent, copyright, or trade secret, i.e., “assume” the license agreement. For example, if non-bankruptcy law excuses the licensor from accepting from or rendering performance to an entity other than the licensee, regardless of any contractual provisions that restrict the assignment of rights (11 U.S.C. § 365(c)(1)), and the licensor does not consent to such assumption or assignment.



<h2 class="wp-block-heading">Trademarks</h2>



While many business owners are now concerned about whether they will get paid for goods and services provided, trademark licensees face a different dilemma: can they continue to use the trademarks they license if the owner/licensor files for bankruptcy or you suspect it might soon. Here&#8217;s what you need to know and three steps you can take now to minimize the risk of losing your trademark rights.



Most businesses rely on trademarks to distinguish their goods and services. Many own their trademarks outright, but others license their trademark rights from the owner or licensor. The Walt Disney Company is the world&#8217;s largest trademark licensor, pulling in more than $50 billion in licensed product sales in 2015, including license fees paid by others that use its trademarks. While Disney appears financially sound, other trademark licensors may not be in such enviable financial shape, especially this year.



In fact, it is highly likely that a certain number of trademark owners/licensors may seek protection under the bankruptcy laws. What is a trademark licensee to do?



First, review your trademark license agreement. While not common, some trademark licenses include language that addresses bankruptcy, often in or near the termination provision(s). For example, “in the event that either party makes an assignment for the benefit of creditors, or files a petition in bankruptcy (whether voluntary or involuntary) or for reorganization, or becomes insolvent or unable to pay its debts as they become due, then the other party may terminate this Agreement immediately upon giving notice to the other.”



In this example, the licensee would have the right, but not the requirement, to terminate the license agreement, stop paying the license fee, and also stop using the trademark. Assuming, however, that the licensee does not want to terminate the license and wants to continue using the trademark (or no language in the license agreement addresses bankruptcy at all), the licensee should go to step number two.



Second, look to the U.S. Supreme Court&#8217;s recent decision in a case called Mission Product Holdings, Inc. v. Tempnology, LLC. Why? Because, strangely, trademarks are not included in the Bankruptcy Code&#8217;s definition of “intellectual property.” Section 365(n) of the code gives most “intellectual property” (patent, copyright, and trade secret) licensees the option to terminate their licenses or continue performing under them for the duration, and any extensions, even after the licensor files for bankruptcy protection and rejects the license agreement.



Trademark licensees are not included in the Code&#8217;s definition of “intellectual property.” The Supreme Court&#8217;s decision in Mission Product clarified that trademark licensees (a non-exclusive trademark license), despite lacking express language in the Bankruptcy Code, must now be treated similarly to other licensees whose contracts are rejected in bankruptcy. In other words, trademark licensees now have the option to continue using the licensed trademark (and paying the license fee) or treat the license as terminated, even if the owner/licensor rejects the license in the bankruptcy. It is the licensee&#8217;s option.



However, keep in mind that while the licensor/debtor may not rescind the license if the licensee elects to continue using the licensed trademark, the licensor/debtor&#8217;s rejection means two things: it permits the licensor/debtor to stop performing its remaining obligations under the license agreement and allows the licensee a claim for damages. While not directly addressed in the Mission Product case, similar to 11 U.S.C. § 365(n), a trademark licensee&#8217;s obligation to make ongoing royalty payments will continue unabated.



Third, consider making an offer to buy the trademark from the owner or the bankruptcy trustee administering the dissolution or reorganization. In all cases, the schedules filed together with, or following, the filing of a bankruptcy petition are required to include a list of all of the debtor&#8217;s property, including intellectual property such as trademarks and registrations. Even if the debtor fails to properly list its trademark, as a licensee you know that trademark rights are in fact owned by the debtor. Depending on the type of bankruptcy and the severity of debt, the trademark may be for sale.



The present value of the future license payments is one estimate of the trademark&#8217;s value. Make sure to involve your trademark lawyer too because you must make certain that you acquire all of the trademark rights, registrations and goodwill. The purchase agreement need not be complicated, but it does need to be done right since the previous owner may soon no longer exist to correct anything missed. Finally, the trademark licensee must be mindful of additional Bankruptcy Code provisions that govern the sale of property in bankruptcy (e.g., 11 U.S.C. §363), and that any prospective sale will be subject to “higher and better offers.” In the event a trademark licensee wishes to purchase the trademark, it should be careful to structure the offer with an eye toward discouraging competing offers.



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Reproduced with permission from Bloomberg Law, this article published on Aug. 19, 2020.

Protecting IP Rights in Pandemic-Era Bankruptcies

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in&nbsp;The Best Lawyers in America©&nbsp;2021.



Best Lawyers&nbsp;compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a&nbsp;Best Lawyers&nbsp;listing is considered an unbiased honor.



ATLANTA, GA Jeff Blake&nbsp;&#8211; Patent Law



DENVER, CO Peter A. Gergely&nbsp;– Litigation &#8211; Intellectual Property, Litigation &#8211; Patent



MINNEAPOLIS, MN John A. Clifford&nbsp;– Litigation &#8211; Intellectual Property, Patent Law, Trademark Law Andrew S. Ehard&nbsp;– Litigation &#8211; Intellectual Property, Trademark Law Allen W. Hinderaker&nbsp;– Litigation &#8211; Intellectual Property, Litigation – Patent Rachel C. Hughey&nbsp;– Litigation &#8211; Intellectual Property Scott W. Johnston&nbsp;– Litigation &#8211; Intellectual Property, Trademark Law Heather J. Kliebenstein&nbsp;–&nbsp;Litigation &#8211; Intellectual Property Thomas J. Leach&nbsp;–&nbsp;Litigation &#8211; Intellectual Property Daniel W. McDonald&nbsp;– Litigation &#8211; Intellectual Property, Litigation &#8211; Patent, Trademark Law Christopher J. Schulte&nbsp;– Litigation &#8211; Intellectual Property, Litigation &#8211; Patent William D. Schultz &#8211; Litigation &#8211; Intellectual Property Christopher J. Sorenson&nbsp;– Litigation – Patent Rachel Zimmerman Scobie&nbsp;– Litigation &#8211; Intellectual Property Anthony R. Zeuli&nbsp;– Copyright Law, Litigation &#8211; Intellectual Property, Litigation &#8211; Patent, Patent Law, Trademark Law

MERCHANT & GOULD ATTORNEYS NAMED BEST LAWYERS 2021

Congratulations to Merchant &amp; Gould&#8217;s attorneys who have been named 2021 Super Lawyers, distinguishing themselves in their legal practice.  Only the lawyers in the top 5 percent of the total lawyers in each state were selected for inclusion in the Super Lawyers list.



Jonathan Berschadsky, New York City Jeffrey D. Blake, Atlanta John A. Clifford, Minneapolis Scott W. Johnston, Minneapolis Heather J. Kliebenstein, Minneapolis Daniel W. McDonald, Minneapolis William D. Schultz, Minneapolis Anthony R. Zeuli, Minneapolis Rachel Zimmerman Scobie, Minneapolis



In addition, Merchant &amp; Gould is proud to announce that five attorneys were recognized as 2021 Rising Stars. Rising Stars are attorneys 40 and under who have been practicing law for 10 years or less. They are selected annually based on nominations from other attorneys and an independent review board.  No more than 2.5 percent of attorneys are selected for Rising Stars in any state.



Eric R. Chad, Minneapolis Michael A. Erbele, Minneapolis Ian G. McFarland, Knoxville Luciano A. Ricondo, New York City Paige S. Stradley, Minneapolis



Every year, Super Lawyers selects attorneys from all firm sizes and more than 70 practice areas on a state-by-state basis. &nbsp;Super Lawyers selects attorneys using a patented multiphase process, which includes evaluating them on 12 indicators of peer recognition, professional achievement and independent research.

Merchant & Gould Announces 2021 Super Lawyers & Rising Stars

Merchant &amp; Gould was honored by the Children’s Law Center of Minnesota (CLC) with the Distinguished Service Award at its 26th Anniversary Virtual Benefit on Oct. 7.



The Distinguished Service Award is presented annually to one law firm or corporation whose work on behalf of CLC’s clients exemplifies the commitment and dedication to pro bono representation that is the foundation of CLC’s mission. &nbsp;According to Amanda Finman-Palmer, Development Director, and the CLC team, Merchant &amp; Gould was especially recognized for its “dedication and commitment to representing children and youth in foster care,” as well as the firm’s “immense impact on Minnesota children in need.”



Over the years, Merchant &amp; Gould attorneys and staff have engaged with CLC in many ways, including CLC board and committee leadership; philanthropy by employees and volunteers; sponsorship support for CLC’s Annual benefit; in-kind donations for CLC clients and operation; and hundreds of pro bono hours representing children and youth in foster care.



Minneapolis partner Tony Zeuli, CLC board member, accepted the Distinguished Service Award on behalf of Merchant &amp; Gould in a video while applauding the firm’s robust team of pro bono volunteers, including Karen Beckman, Eric Chad, Julie Daulton, Lindsay Hartman, Rachel Hughey, Bradley Kuxhausen, Anneliese Mayer, Elisabeth “Bette” Muirhead, Ryan Smith, Rachel Zimmerman Scobie, and Tracey Skjeveland.



CLC provides free legal advocacy for foster care youth in Minnesota. &nbsp;The organization advocates for foster children through systemic reform and provides free legal representation services to foster children. &nbsp;CLC also trains volunteer attorneys to represent foster children in court. &nbsp;Currently, CLC represents over 800 children per year. &nbsp;

Merchant & Gould Receives Distinguished Service Award from Children’s Law Center of Minnesota

Merchant &amp; Gould partner Tony Zeuli says volunteering with Children’s Law Center (CLC) to represent foster children in court is a rewarding experience for him and Minneapolis colleagues.



Zeuli, a CLC board member, accepted the nonprofit’s Distinguished Service Award on the firm’s behalf earlier this month.



Read the rest of the article <a href="https://minnlawyer.com/2021/10/21/breaking-the-ice-ip-attorney-colleagues-earn-pro-bono-recognition/">here.</a>

Breaking the Ice: IP attorney, colleagues earn pro bono recognition

Other Attorneys Recognized for Pro Bono Hours and CLC Distinction



Merchant &amp; Gould’s Pro Bono Committee announced the firm’s 2021 Pro Bono Awards to attorneys who have dedicated their time to helping their communities through pro bono legal services and their deep commitment.&nbsp;



A special congratulations goes to Sheila Niaz (Minneapolis) who performed more than 300 hours of pro bono legal work this year. &nbsp;Sheila’s pro bono work included preparing several patent applications in connection with LegalCORPS and assisting on the appeal of a criminal conviction. &nbsp;She is the sole recipient of Merchant &amp; Gould’s 2021 Pro Bono Award.



In addition, we want to recognize Rachel Hughey (Minneapolis) who has since been appointed as a District Court Judge in Minnesota’s Fourth Judicial District; Bill Hughet (D.C.); Mike Erbele (Minneapolis); Joe Gess (D.C.); Rachel Scobie (Minneapolis); and Ben Tramm (Minneapolis) for dedicating more than 40 hours of pro bono work this year.



We also want to applaud our Minneapolis team of attorneys who received Children’s Law Center (CLC) of Minnesota’s “Distinguished Service Award” this year: &nbsp; Karen Beckman, Eric Chad, Julie Daulton, Lindsay Hartman, Rachel Hughey, Bradley Kuxhausen, Anneliese Mayer, Elisabeth “Bette” Muirhead, Ryan Smith and Rachel Zimmerman Scobie, Tracey Skjeveland and Tony Zeuli (CLC board member). &nbsp;Merchant &amp; Gould was recognized for its “dedication and commitment to representing children and youth in foster care,” as well as the firm’s “immense impact on Minnesota children in need.”



Congratulations to Sheila and all the attorneys who continue to help make our communities even better!

Merchant & Gould Congratulates Sheila Niaz as the Firm’s Pro Bono Award Winner

Congratulations to Merchant &amp; Gould’s attorneys who have been named 2023 Super Lawyers, distinguishing themselves in their legal practice. Only the lawyers in the top 5 percent of the total lawyers in the state were selected to be included in the Super Lawyers list.



 Scott W. Johnston, Minneapolis – IP Litigation Heather J. Kliebenstein, Minneapolis – IP Litigation William D. Schultz, Minneapolis – IP Litigation Anthony R. Zeuli, Minneapolis – IP Litigation Rachel Zimmerman Scobie, Minneapolis – IP Litigation



 In addition, Merchant &amp; Gould is proud to announce that one attorney was recognized as 2023 Rising Stars. Rising Stars are attorneys 40 and under who have been practicing law for 10 years or less. They are selected annually based on nominations from other attorneys and an independent review board. No more than 2.5 percent of attorneys are selected for Rising Stars in any state. 



Joseph W. Dubis, Minneapolis – IP Litigation 



Every year, Super Lawyers selects attorneys from all firm sizes and more than 70 practice areas on a state-by-state basis. Super Lawyers selects attorneys using a patented multiphase process, which includes evaluating them on 12 indicators of peer recognition, professional achievement, and independent research.

Merchant & Gould Announces 2023 Super Lawyers & Rising Stars

Last week, the Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/22-1386.OPINION.1-19-2024_2255688.pdf">Roku, Inc. v. ITC, No. 22–1386 (January 19, 2024)</a>, holding that the language “hereby sells and assigns” is a present conveyance of rights and not merely a promise to do so in the future.



Roku creates various TV streaming technologies, such as the Roku streaming channel and the Roku stick. Universal Electronics filed a complaint against Roku with the International Trade Commission alleging infringement of U.S. Patent No. 10,593,196.&nbsp; The ’196 patent concerns managing different communication protocols so that different electronic devices can “talk” to each other, such as a DVD player and TV. The invention of the ’196 patent “essentially translates between the different types of devices.”



The ITC instituted an investigation.&nbsp; Roku filed a motion arguing that Universal lacked ownership of the ’196 patent because one of the inventors, Mr. Barnett, had merely promised to assign his rights in the invention to Universal in the future.&nbsp; In the assignment to Universal, Mr. Barnett “hereby sell[s] and assign[s] . . . [his] entire right, title, and interest in and to the invention,” including “all divisions and continuations thereof, including the subject-matter of any and all claims which may be obtained in every such patent.” The Commission held that language was a present conveyance of Mr. Barnett’s rights and not merely a promise of a future conveyance. The administrative law judge found against Roku.&nbsp; The ITC affirmed the administrative law judge’s findings, including that Universal had ownership rights to assert the ’196 patent.&nbsp; Roku appealed several issues, including the ownership issue.



However, the Federal Circuit affirmed the ITC on all issues, including the ownership dispute. The Federal Circuit began its analysis by pointing out that an earlier agreement between Mr. Barnett and Universal was not the operative assignment.&nbsp; That earlier agreement only said that “inventions created by Mr. Barnett ‘shall be’ the property of Universal.”&nbsp; While the appellate court did not have reach whether that language was an automatic assignment or merely a promise to assign rights in the future, its choice to avoid that language suggests that it might not be sufficient.&nbsp; Instead, the court of appeals focused on the latter assignment that included the “hereby sells and assigns” language.&nbsp; Although that language has been scrutinized too as to whether it creates an automatic assignment, the Federal Circuit again affirmed that it was sufficient. “The language of each assignment states that Mr. Barnett ‘hereby sell[s] and assign[s] . . . [his] entire right, title, and interest in and to the invention,’ including ‘all divisions and continuations thereof, including the subject-matter of any and all claims which may be obtained in every such patent. (citation omitted) On its face, the agreement language constitutes a present conveyance.”

Federal Circuit Confirms “Hereby” Sells and Assigns Language is a Conveyance of Rights

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Personalized Media Communications, LLC v. Apple Inc., No. 2021-2275 (January 20, 2023), affirming a district court’s finding of patent unenforceability based on prosecution laches, which nullified a $308 million jury verdict.



Personalized Media Communications (“PMC”) sued Apple alleging that Apple’s FairPlay technology infringed one of PMC’s patents. A Texas jury decided that Apple infringed and awarded $308 million in damages. However, subsequently, a bench trial was held on Apple’s equitable defense that the patent was unenforceable. Specifically, Apple argued that the PMC patent was unenforceable due to prosecution laches. Prosecution laches may arise where a patentee’s conduct constitutes an egregious misuse of the patent system. “Prosecution laches requires proving two elements: (1) the patentee’s delay in prosecution must be unreasonable and inexcusable under the totality of circumstances and (2) the accused infringer must have suffered prejudice attributable to the delay.” As to PMC’s delays during prosecution, the district court focused on the following: PMC’s delay of eight to fourteen years to file its patent applications; that hundreds of patent applications were filed in a short period of time; a delay of at least sixteen years to present the asserted claims for examination; and “vast” prior art disclosures (many having little relevance) that made prosecution “virtually impossible.” Regarding Apple’s prejudice, the district court found that Apple had begun development of FairPlay in the same year that PMC first added the technology to its patent application, which did not issue until seven years after FairPlay existed. In addition, the district court found that PMC had intentionally delayed the issuance of its patents so that “‘[o]nce infringement becomes wide-spread in an industry, the patented technology becomes so deeply embedded in commercial products that design around is not an option to infringers.’” The district court concluded that PMC’s patent was unenforceable due to prosecution laches. PMC appealed.



The Federal Circuit affirmed. The panel majority held the district court applied the correct law and that its factual findings were not clearly erroneous. Judge Stark dissented. Agreeing that PMC’s prosecution delays were both unreasonable and inexcusable, the dissent concluded that “Apple [] failed to prove that PMC unreasonably and inexcusably delayed prosecution in or after” the time Apple developed FairPlay.

CAFC Affirms District Court’s Finding of Prosecution Laches

Last week, the U.S. Supreme Court issued an opinion in <a href="https://www.supremecourt.gov/opinions/22pdf/21-1043_7648.pdf">Abitron Austria GmBH v. Hetronic Int’l, Inc., No. 21–1043 (June 29, 2023)</a>, holding that trademark infringement under the Lanham Act is not extraterritorial and extends only to infringing use in commerce that is domestic to the United States.



Hetronic manufactures remote controls in the U.S. used for construction equipment. Abitron, based in Germany and Austria, reversed engineered Hetronic’s products and began selling its own products, using the Hetronic brand, primarily in Europe but with a few sales directly to customers in the United States.



Hetronic sued Abitron under the Lanham Act for trademark infringement (§1114(1)(a)) and false designation of origin (§1125(a)(1)).&nbsp; Both provisions prohibit the unauthorized use of marks in commerce when that use is likely to cause confusion. &nbsp;Hetronic sought damages for Abitron’s infringing sales worldwide alleging all such use impacted Hetronic in the U.S.&nbsp; Abitron unsuccessfully argued that Hetronic’s damages demand was an impermissible extraterritorial application of the Lanham Act. The jury awarded Hetronic $96 million in damages, and the district court issued a worldwide permanent injunction. The Tenth Circuit affirmed but narrowed the scope of the injunction. The U.S. Supreme Court granted certiorari, vacated and remanded.



The Supreme Court applied a two-step framework in its review. Step one evaluated whether the presumption against extraterritoriality in U.S. laws was successfully rebutted, which turns on whether Congress affirmatively instructed that the provisions apply to foreign conduct. &nbsp;The Court concluded that neither §1114(1)(a) nor §1125(a)(1) include an express statement of extraterritorial application, failing to rebut the presumption.



At step two, the Court’s majority opinion evaluated whether the suit sought a permissible domestic application of the asserted Lanham Act provisions. The Court held that the domestic application of the Lanham Act, “use in commerce,” is premised on whether the actual infringing use occurred in commerce in the United States. Accordingly, the Court vacated and remanded for further proceedings consistent with its opinion.



Justice Jackson concurred but hypothesized that a foreign manufacturer may be liable for infringement if their products were resold domestically by a third party.



Justice Sotomayor, joined by Chief Justice Roberts and Justices Kagan and Barrett, concurred in the judgment but disagreed with the extraterritoriality framework of the majority, expressing the view that a likelihood of confusion in the United States would be satisfactory to incur Lanham Act liability— as opposed to actual infringing use in commerce.



Coauthored by Tony Zeuli &amp; Henry Adebisi.

U.S. Supreme Court Provides Guidance on Extraterritorial Effect of U.S. Trademark Laws

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1134.Opinion.4-13-2020_1568488.pdf" target="_blank" rel="noopener">O.F. Mossberg &amp; Sons, Inc. v. Timney Triggers</a>, LLC, et al., 2019-1134 (April 13, 2020), affirming the district court’s denial of Defendants’ attorney’s fees motion because they were not a “prevailing party” following Plaintiff’s dismissal without prejudice. Plaintiff Mossberg owned a patent covering a gun trigger. It sued Defendants for patent infringement. Rather than answer, Defendants attacked the validity of the patent in the USPTO. The district court stayed Plaintiff’s infringement lawsuit. After five years, Defendants ultimately prevailed in invalidating the patent at the USPTO. Plaintiff then filed a notice of voluntary dismissal without prejudice under Federal Rule of Civil Procedure 41(a)(1)(A)(i) in the district court. The district court entered an order stating that the case was dismissed without prejudice.



Defendants subsequently filed a motion for attorney’s fees under 35 U.S.C. § 285, which in addition to requiring proof of an exceptional case, also requires that the moving party was “the prevailing party.” The district court hung its hat on the latter, holding that Defendants were “not a prevailing party to collect attorney’s fees . . . because a ‘Rule 41 dismissal without prejudice is not a decision on the merits and thus cannot be a judicial declaration altering the legal relationship between the parties.’” Defendants appealed.



The decision on appeal turned on whether there had been a “final decision.” A final decision for purposes of determining a “prevailing party” requires that the decision change the legal relationship between the parties. The Federal Circuit agreed no such decision had occurred – in the infringement lawsuit – before the dismissal. The final invalidity decision could not be used because it was obtained in a separate venue, the USPTO, not the district court. The Court agreed that neither the stay nor the dismissal order were final decisions either. The dismissal order was not a “final decision” because Mossberg’s notice of dismissal, which was earlier, was effective immediately upon filing. “Although the district court in this case entered a dismissal order after Timney filed its notice of voluntary dismissal, that dismissal order had no legal effect.” The only other court order in the case was the stay. “[T]he stay did not change the legal relationship between the parties; the Board’s invalidity decision and Mossberg’s voluntary Rule 41(a)(1)(A)(i) dismissal did.”

Defendant Is Not A “Prevailing Party” Following Voluntary Dismissal Without Prejudice

Recently, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2374.Opinion.4-3-2020_1563194.pdf" target="_blank" rel="noopener">Myco Industries, Inc., et al. v. BlephEx, LLC, et al., 2019-2374</a> (April 3, 2020), holding it was error for the district court to grant a preliminary injunction enjoining a patent owner from threatening a competitor’s customers with infringement litigation. BlephEx owns a patent covering a method of treating a damaged eye. Myco sells a medical instrument that, when used by optometrists, allegedly infringes BlephEx’s patent. At a 2019 trade show, BlephEx personnel made “loud accusations of infringement within earshot of prospective [Myco] customers” and repeated those claims to potential customers at the BlephEx booth. Myco sued BlephEx for a declaratory judgment of non-infringement and invalidity, and requested a preliminary injunction enjoining BlephEx “from making allegations of patent infringement” and “from threatening litigation against Myco’s potential customers.” The district court granted the injunction. Myco appealed.



The decision on appeal turned on whether the alleged threats of infringement litigation constituted free speech. The Federal Circuit held the statements were protected free speech, and vacated the injunction as an illegal prior restraint. “‘[F]ederal law requires a showing of bad faith’ before a patentee can be enjoined from communicating his patent rights. . . . A showing of ‘bad faith must be supported by a finding that the claims asserted were objectively baseless. . . . An asserted claim is objectively baseless if no reasonable litigant could realistically expect success on the merits. . . . Therefore, ‘communication to possible infringers concerning patent rights is not improper if the patent holder has a good faith belief in the accuracy of the communication.’”



The Court determined BlephEx’s statements were neither false nor misleading, which went a long way in vacating the injunction. The Court also noted that the district court made no finding of bad faith, which alone would have been enough to vacate under the federal test. Instead, the district court had relied heavily on its narrow construction of the scope of the BlephEx patent, which it said supported a strong likelihood that Myco and its customers would not infringe—implying some bad faith for alleging otherwise. The Federal Circuit concluded the patent was entitled to a broader scope, which also meant that Myco’s potential infringement was not objectively baseless, let alone false or misleading.

Good Faith Threats of Patent Infringement Are Protected Free Speech

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Pavo Solutions LLC v. Kingston Tech. Co., No. 2021-1834 (June 3, 2022), affirming a district court’s judgment of willful infringement.



Pavo sued Kingston for infringement of a patent directed to a flash memory device with a rotating cover. During claim construction, Pavo asked the district court to “correct” the following claim phrase: “the hinge protuberance on the case for pivoting the case with respect to the flash memory main body, . . . .” Pavo argued that the second use of “case” in both independent claims was an obvious clerical error, which the district court could fix by changing it to “cover.” Kingston argued that the district court could not change structural claim terms without improperly changing the scope of the claim. The district court disagreed, concluding “that the error was ‘evident from the face of the patent’ because ‘[t]he case is described as part of the main body, so it is not possible for it to rotate with respect to the body.’” At trial, Kingston was found liable for willful infringement, resulting in a damages award of more than $7 million to Pavo. Kingston appealed.



The Federal Circuit affirmed. The Court explained that correction of a patent claim is appropriate “‘only if (1) correction is not subject to reasonable debate based on consideration of the claim language and the specification and (2) the prosecution history does not suggest a different interpretation of the claims.’” The Court noted that, here, the claim language uses the term “case” twice—the second time as part of the body about which it rotates, which is impossible. Moreover, the specification describes the cover, not the case, as pivoting relative to the main body, which includes the case. Finally, statements in the prosecution history were consistent with the second use of “cover” being a mistake. Accordingly, distinguishing this case from the facts in Chef America, Inc. v. Lamb-Weston, Inc., the Court held the district court properly corrected the claim. The Court also rejected Kingston’s separate challenge to the judgment of willful infringement and award of enhanced damages, holding “reliance on an obvious minor clerical error in the claim language is not a defense to willful infringement.”

CAFC Affirms Judgment of Willful Infringement Despite Error in Claim

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1203.OPINION.3-9-2021_1745042.pdf" target="_blank" rel="noopener">Edgewell Personal Care Brands v. Munchkin, Inc</a>, No. 2020-1203 (March 9, 2021), reversing the grant of summary judgment of noninfringement.



Edgewell, the company behind the Diaper Genie®, sued Munchkin for infringement of two patents covering the disposable refill cassettes, U.S. Patent Nos. 8,899,420 and 6,974,029. Munchkin sells disposable refill cassettes that work with several Diaper Genie® products. The ’420 patent requires a “clearance” in the bottom of the cassette.&nbsp; There was no dispute that Munchkin’s cassettes contained a clearance in the bottom.&nbsp; However, the infringement dispute focused on whether a clearance must exist when the cassette is installed in the diaper pail. The trial court concluded that “that ‘clearance’ required space after cassette installation and construed clearance as ‘the space around [interfering] members that remains (if there is any), not the space where the interfering member or cassette is itself located upon insertion.’”&nbsp; Based on that construction, the trial court granted Munchkin summary judgment of noninfringement because, the court concluded, there was no space between the cassette and the pail after the cassette was installed.



The Federal Circuit reversed. First, looking to the claims, the Court noted that the ’420 patent claims are directed only to the cassette, not the cassette and the diaper pail.&nbsp; “[A]bsent an express limitation to the contrary, the term ‘clearance’ should be construed as covering all uses of the claimed cassette.”&nbsp; Second, examining the specification, the Court located “multiple other embodiments which suggest there would be no space after insertion (i.e., that the clearance space would be filled by a complimentary structure in the pail itself).”&nbsp; Finally, the Court found that one of the purposes of the clearance was to properly orient the cassette in the pail, which was evidence that a clearance was not required after the cassette was properly installed.&nbsp; “In nearly all of the disclosed embodiments, the specification suggests that the cassette clearance mates with a complimentary structure in the pail such that there is ‘engagement.’” The Court held the clearance limitation is satisfied when the cassette itself is constructed with a clearance.&nbsp; “The claim does not require a clearance after insertion; in fact, such a requirement would be at odds with many of the disclosed embodiments and is simply not required by the claims.”&nbsp;

CAFC Reverses Diaper Genie® Loss

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Carol Hough

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In 2017, Tony and a trial team from M&amp;G obtained a $5 million jury verdict in favor of Proformance Manufacturing, Inc.  The case involved patented window technology.  The trial court later reduced the award to $3 million, plus prejudgment interest and costs, which was affirmed on appeal.
In 2015-2017, Tony and a team from M&amp;G represented Toro in three separate patent infringement actions. Following a favorable claim construction and reexaminations, all three cases settled favorably.
In 2017, Tony successfully represented Terrybear Urns and Memorials in a trademark and trade dress case concerning urns and keepsakes.
Beginning in 2014, Tony and a team from M&amp;G represented Ecolab and its Nalco subsidiary in the enforcement of several patents covering chemical mixers.
Also in 2014, Tony represented Lund, Inc. in two patent and trademark enforcement matters that resulted in business acquisitions.
In 2013, Tony represented McMillan Electric in enforcement of two electric motor patents. The case turned on the construction of claim terms used to describe a complex electrical circuit. Tony was able to convince the defendant and its counsel that McMillan’s read of the patent would prevail in court.  The case settled very favorably shortly thereafter.
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.
In 2012, Tony and a small team of M&amp;G lawyers won summary judgment for their client on all claims by Michael Jordan, including right of publicity violations and trademark infringement.  The district court agreed that M&amp;G&#8217;s client had engaged in speech protected by the First Amendment and dismissed all of Jordan&#8217;s claims.
In 2011, Tony and a small team from M&amp;G successfully resolved a multi-patent, multi-trademark lawsuit in M&amp;G&#8217;s client&#8217;s favor.  The client was the patent/trademark owner and asserted three of its patents and several trademarks against a competitor.  The settlement included a consent judgment.
Also in 2011, Tony successfully argued a claim construction for a M&amp;G client accused of infringing 135 claims in five patents.  Tony focused on a single claim limitation found in all 5 patents and demonstrated that the patent owner had disclaimed subject matter applicable to all asserted claims.
In 2010, Tony and a team of M&amp;G lawyers and paralegals successfully resolved a multi-patent, multi-court litigation for an industry-leading manufacturing client. The M&amp;G team utilized reexamination of the adverse party&#8217;s patents and as well as their client&#8217;s patents to obtain a stay of the litigation and strengthen their client&#8217;s position. The Patent Office later confirmed the patentability of M&amp;G&#8217;s client&#8217;s patents, while rejecting the patentability of the competitor&#8217;s patents. The case resolved favorably for M&amp;G&#8217;s client after the Patent Office decisions.
Also in 2010, Tony represented an industry-leading electronics retailer in a trademark litigation against an online infringer. Tony was able to obtain a judgment for his client that not only transferred the defendant&#8217;s domain name to Tony&#8217;s client but also all of the defendant&#8217;s phone numbers that had ever been associated with the infringing mark.
In 2009, Tony and small team of M&amp;G lawyers represented another game manufacturer in a trademark dispute with a former distributor who was counterfeiting. Tony was able to convince the court to grant his client a temporary restraining order and preliminary injunction to stop the infringing sales. The win was especially gratifying given that another court had earlier questioned the validity of the client&#8217;s mark in a separate proceeding handled by a different law firm.
In 2008, Tony was lead trial counsel on a patent infringement lawsuit against the world&#8217;s largest game manufacturer. After a six-day trial, the jury returned a verdict and substantial monetary award in Tony&#8217;s client&#8217;s favor. Several years before a jury heard this case, Tony successfully argued an appeal to the Court of Appeals for the Federal Circuit to have reversed an incorrect ruling by the district court that had ended the case.
Tony has been lead counsel on a number of patent infringement lawsuits for a large manufacturer of turf equipment. One case was successfully tried to an arbitration panel resulting in an invalidity decision in Tony&#8217;s client&#8217;s favor. Another recent case involved a full-day Markman hearing &#8211; the result of which was that 8 of the 9 claim terms were construed in Tony&#8217;s client&#8217;s favor. Another full-day Markman hearing in 2008 with difficult issues resulted in a significant ruling in Tony&#8217;s client&#8217;s favor.
In 2007, Tony was hired as co-lead counsel to replace a prominent Washington D.C. law firm on an inventorship dispute case against the world&#8217;s largest DNA sequencing company. After taking several key depositions, and during the deposition of one of the defendant&#8217;s founders, the case settled favorably for Tony&#8217;s client.
Also in 2007, Tony was hired as co-lead counsel to replace another law firm on a trademark infringement lawsuit against a prominent national retailer and a large international clothing manufacturer. Tony and his co-counsel were able to quickly put together a strong and credible position from which a very favorable settlement was quickly reached.
Tony has been lead counsel on several patent infringement lawsuits for a major automotive parts manufacturer. All of the lawsuits (more than 6) have resulted in favorable outcomes for Tony&#8217;s client.
Tony has also been lead counsel for glass manufacturer from the Czech Republic. A recent case for this client resulted in a significant award of damages, enhanced damages and attorney&#8217;s fees.
In 2006, Tony was co-counsel for a satellite manufacturer accused of patent infringement. After a five-day jury trial in Minneapolis, the patent was held invalid and the plaintiff recovered nothing.
Tony represented three companies of the hundreds sued by the Lemelson Foundation for patent infringement concerning barcode scanners. When the claims were eventually dismissed against all three of Tony&#8217;s clients, he was the only lawyer who brought a motion seeking the recovery of attorney&#8217;s fees for his clients.
Tony has successfully represented an international importer of crematory urns in several copyright infringement lawsuits. The most recent lawsuit resulted in a favorable stipulated judgment.
Tony and others at Merchant &amp; Gould successfully represented an international telecommunications company in patent infringement litigation in China. It was one of the first patent infringement lawsuits brought by a U.S. company against a Chinese company under China&#8217;s recently enacted patent reform laws.
Tony and others at Merchant &amp; Gould successfully tried a copyright infringement case to a jury in Minneapolis. The case involved two toy manufacturers at odds over a then-popular toy doll line.

Anthony  R. Zeuli

Hispanic National Bar Association 
American Intellectual Property Law Association 
Minnesota Intellectual Property Law Association 
American Bar Association 
Minnesota State Bar Association 
Hennepin County Bar Association 
National Institute of Trial Advocacy (NITA) 
    Faculty Member 
The Honorable Jimmie V. Reyna Intellectual Property American Inn of Court 
    Master and Founding Member 
The Children&#8217;s Law Center of Minnesota 
Board of Directors

Professional Affiliations

Named the Best Lawyers® 2017 Patent Law &#8220;Lawyer of the Year&#8221; in Minneapolis 
Included in The Best Lawyers in America© in the fields of Copyright Law, Litigation &#8211; Intellectual Property, Litigation &#8211; Patent, Patent Law, and Trademark Law, 2007-2024 
Named a Best Lawyer 2017 by Minnesota Monthly 
IAM Patent 1000 – The World’s Leading Patent Practitioners, Minnesota &#8211; Litigation, 2013-2017 
Selected for inclusion in Minnesota Super Lawyers, 2004-2020 
Selected for inclusion in Top 100 Super Lawyers in Minnesota, 2008-present 
Named the Best Lawyers 2013 Copyright Law &#8220;Lawyer of the Year&#8221; in Minneapolis

Awards & Recognition

<h3>Publications</h3>
<a href="https://news.bloomberglaw.com/bankruptcy-law/insight-steps-to-prevent-losing-trademark-rights-if-the-owner-seeks-bankruptcy" target="_blank" rel="noopener">INSIGHT: Steps to Prevent Losing Trademark Rights If the Owner Seeks Bankruptcy</a>, Co-Authored with Ron Roteman, Bloomberg Law, May 11, 2020
Business Unusual: What’s Needed to Own a Business Method?, Bench &amp; Bar of Minnesota, November 2, 2009
Notes and Trends, Bench &amp; Bar of Minnesota &#8211; Monthly
TRIAL LAWYER&#8217;S NOTEBOOK, Intellectual Property Today &#8211; Monthly
Intellectual Property Protection: How to Get Started, co-authored, UCBC News, October 2006
Avoiding Patent Claim Construction Errors, The Federal Lawyer, Volume 51, Number Five &#8211; June 2004
<h3>Presentations</h3>
Speaker/Moderator on Managing Your IP Portfolio: Recent Trends in IP Law, HNBA Mid-Year Convention, March 14, 2013
<h3>Quoted</h3>
<a href="https://www.law360.com/ip/articles/25037/vonage-fate-highlights-need-for-strong-ip-portfolio">Vonage Fate Highlights Need for Strong IP Portfolio</a> by Christine Caulfield, IP Law360, June 1, 2007

Anthony R. Zeuli

Practices

Representative Cases

Education

Admissions

Professional Affiliations

Awards & Recognition

Publications & Speaking Engagements

Publications

Presentations

Quoted