Daniel W. McDonald

Partner
Minneapolis
3200 IDS Center, 80 South Eighth Street
Minneapolis, MN 55402
D: 612.336.4637
Contact My Assistant
Victoria Hanson
D: 612.371.5394

Education

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

University of Minnesota
B.S. Electrical Engineering, high distinction, 1982

Bar and Court Admissions

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

Professional Affiliations

University of Minnesota Alumni Association
   Past Chair 2017-2018
   Chair 2016-2017

University of Minnesota Law School
     Alumni Board of Advisors, Chair of Academic Engagement Committee
Minnesota State Bar Association
    Past President, Computer Law Section
Minnesota Intellectual Property Law Association
    Past Chair, Litigation/CAFC/ADR Committee
University of Minnesota College of Science and Engineering Alumni Society
    Past President
Minnesota Alumni Chapter of Tau Beta Pi
    Founder and Past President
The American Bar Foundation
     Life Fellow

Awards & Recognition

Attorneys of the Year by Minnesota Lawyer, 2015
Best Lawyer’s® Lawyer of the Year for 2015 for Patent Litigation in Minneapolis
Selected for inclusion in the IAM Patent 1000 The World’s Leading Patent Practitioners, Minnesota, 2014-2017
Selected for inclusion in Top 100 Super Lawyer's in Minnesota, 2013
Best Lawyers in America by The Best Lawyers in America, 2013-2015, 2018
IP Stars by Managing IP, 2013-2014
Leading Individuals in IP Litigation in Minnesota, Chambers USA
Selected for inclusion in Minnesota Super Lawyers, 2006-2017
AV peer review rating by Martindale-Hubbell
 

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Publications & Speaking

Presenter at Various Seminars Including

Presenter and Moderator, The Story Behind Maxwell v. J. Baker: A Case Study of Gender Issues in Intellectual Property Disputes, Minnesota CLE webinar, August 2015

Panelist, Litigation Update, 2015 Electronic Computer Patent Law Summit, AIPLA, Dallas TX, June 2015

Panelist regarding Inter Partes Reviews, Are Patent Office Invalidity Trials Working to Better Resolve Patent Disputes?, Minneapolis MN, October 1, 2014

Presenter, IPO Doctrine of Equivalents: Latest on Patent Prosecution and Litigation, Webinar, March 06, 2014

Rainmaker Q&A: Merchant & Gould's Daniel McDonald, Law360, August 22, 2013

"How to Prove Damages in Patent, Trademark and Copyright Cases LIVE Webcast",The Knowledge Group LLC, April 3, 2012

Panel Moderator, “IP Litigation Costs: Your Mileage May Vary,” November 15, 2011 Corporate Intellectual Property Institute, Georgia State University

Panel Moderator, “Early Damages Assessments in IP Infringement Matters: Gauging the Scope of the Risk Without Knowing All the Facts,” November 10, 2010 Corporate Intellectual Property Institute, Georgia State University

LexisNexis® Intellectual Property Law Center Podcast featuring Dan McDonald of Merchant & Gould on In re: Bilski, Published on Apr 28, 2009 in Politics.

Panel on Willful Infringement Post-Seagate, MIPLA Stampede, May 2008

Co-Chair, AIPLA Advanced Patent Litigation Road Show, June 2008, speaker on patent reexams from accused infringer perspective

Panel on Patent Litigation Tough Issues, Midwest IP Institute, September 2008

Speaker, Patent reexams and litigation from accused infringer prospective, various forums.

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

Quoted

Should your company enlist patent privateers?, Inside Counsel, March 2013 Issue

Lawyer: How to beat patent trolls, by: Jim Hammerand, Minneapolis/St. Paul Business Journal, February 8, 2013

Inside Track: Birch Bark Project Comes Back to the U, by: Neal ST. Anthony, Star Tribune, January 26, 2013

Merchant & Gould gets into the Software Business with Elumis, by: Bryant Ruiz Switzky, Minneapolis/St.Paul Business Journal, July 2,2007

Have the 'Patent Trolls' Lost Their Best Cudgel with Recent Events? by: Jonathan Eisenthal, Minneapolis/St.Paul Business Journal, May 14, 2007

Selected Articles, Books Authored

Recovery of Expert Fees Driven by More Than Octane, co-authored with Linhda Nguyen, ABA Intellectual Property Litigation, Winter 2016, Vol. 27, No. 2, January 11, 2016

MPHJ Case Is Good News For Downstream Tech Users, Law360, co-authored with William D. Schultz, September 4, 2013

E-book, Protecting Your Company from the New Era of Patent Infringement Suits, ExecSense, Dec. 2012, available at amazon.com (ASIN B00AOBIOM6)(Also available in Japanese)

Business forum:  Stemming the tidal wave of patent claims,” co-authored with William D. Schultz, Minneapolis StarTribune, August 4, 2012

LexisNexis® Intellectual Property Law Center Podcast featuring Dan McDonald of Merchant & Gould on In re: Bilski, Published on Apr 28, 2009 in Politics

Beyond Rule 11: The Case For Full Early Assessment, co-authored with Joseph E. Lee, IP Law360 - December 4, 2007

Does Phillips v. AWH Corp Take the Life Out of the "Life and Meaning" Test for Whether Claim Preambles All Limitations? AIPLA Quarterly Journal, June 2007, with H. Kliebenstein

MedImmune: More Leverage, co-author, Law Week Colorado (May 14, 2007)

Fighting the Modern Patent Wars, IP Today, January 2007, page 7

Supreme Court Decision Gives Licensees Leverage, IP360, March 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

Why Aren't Experts Fees Recoverable in Patent Cases? Journal of Patent Office Society, Vol 84, No. 4, April 2002

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

Leadership & Civic Involvement

University of Minnesota Alumni Association 
     Secretary-Treasurer and At-Large Representative, National Board
     Chair, Finance and Audit Committee 

University of Minnesota College of Science and Engineering Alumni Society
     Past President and Board Member
University of Minnesota Law School
     Alumni Board of Advisors
Minnesota Alumni Chapter of Tau Beta Pi, National Engineering Honor Society
     Founder and Past President

Inventorship

Root Beer Float Strainer and Method of Reducing Foam: US Patent Nos. 7,685,936 and 8,443,719

Strainer (design patent) US Patent No. D644,072

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. In the past, Dan has served as chair of Merchant & Gould's Litigation Practice Group.

Dan is Best Lawyer’s® Lawyer of the Year for 2015 for Patent Litigation in Minneapolis. 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.
 

     
McDonald Lawyer of the Year 2015 McDonald AVVO Superb Rating Badge

Representative Cases

Cardiocom, LLC (now Medtronic Care Management Services, LLC) v. Robert Bosch Healthcare Systems, Inc. Lead trial counsel on litigations, reexaminations, and Inter Partes Review Proceedings brought at the Patent Trial and Appeal Board (PTAB) on behalf of a company accused by Bosch Healthcare of infringing 12 patents related to remote health care monitoring systems.   Following institution proceedings and trials regarding four patents, the PTAB found all claims in three patents invalid and all claims at issue in the fourth patent invalid. PTAB IPR2013-00431, -00449, 000451, -00468).  Bosch’s appeal is pending.

Several other proceedings are pending at the Patent and Trademark Office challenging the 12 patents asserted by Bosch Healthcare against Cardiocom in litigation.  Every claim currently stands rejected in reexaminations involving all six patents asserted against Cardiocom in a 2012 lawsuit, which is stayed pending the final outcome of the reexaminations.   Robert Bosch Healthcare Sys., Inc. v. Cardiocom, LLC, No. 12-3864, Dkt. 43 (N.D. Cal. Dec. 3, 2012).  Bosch brought a second case in Texas against Cardiocom, which we successfully moved to transfer to California and which is also stayed pending Patent Office proceedings. Robert Bosch Healthcare Sys., Inc. v. Cardiocom, LLC, No. 14-1575, Dkt. 51 (E.D. Tex. Mar. 10, 2014); Robert Bosch Healthcare Sys., Inc. v. Cardiocom, LLC, No. 14­1575, Dkt. 145 (N.D. Cal. July 3, 2014).

Rudolph Technologies Inc. v. Camtek, Ltd., Civil No. 05-1396 (D. Minn.) 2015 U.S. Dist. LEXIS 15017 (D. Minn. Feb. 9, 2015).  Lead counsel for plaintiff, a semiconductor inspection system manufacturer and owner of U.S. Patent No. 6,826,298.  Summary judgment of infringement granted, injunction issued, and $14.5 million judgment for lost profits damages and interest entered.  Camtek is appealing the judgment.

The judgment was entered following a limited remand after an appeal.  Rudolph Technology and August Technologies Inc. v. Camtek Inc., 655 F.3d 1278 (Fed.Cir. 2011). After a month-long trial, a jury found in favor of the plaintiff on infringement, validity, and prior art issues, and awarded lost profits of $6.8 million.  An $8 million judgment and permanent injunction entered August 2009.  The Court later awarded supplemental damages, found willful infringement post-trial. In 2011 the Federal Circuit affirmed the findings of patent validity and enforceability and remanded for a limited retrial due to a claim construction issue, resulting in the $14.5 million judgment described above. A copy of the transcript of the oral argument in the appeal before the CAFC is available here.

Cooper Notification Inc. v. Federal Signal et al., No. 2012-1615, 2013 WL 4611752 (Fed. Cir. Aug. 30, 2013) (D. Del. Judge Stark).  Mr. McDonald was lead counsel for defendant Federal Signal which, along with three other companies including Twitter, was sued by Cooper Notification for allegedly infringing a communications system patent.  The defendants sought reexamination of the patent; this led the plaintiff to agree to dismiss certain claims from the infringement case.  The reexam also provided a springboard to a claim construction that Mr. McDonald used to prevail on summary judgment of noninfringement as to the remaining claims.  The plaintiff appealed the summary judgment and the dismissal.  The Federal Circuit affirmed all aspects of the summary judgment and dismissal of the claims in August 2013. 

Integrated Tech. Corp. v. Rudolph Techs., Inc.,734 F.3d 1352 (Fed. Cir. 2013)(D. Az. Judge Finesilver).  After one product Rudolph sold was found to infringe on summary judgment, well after discovery closed, and shortly before trial, Mr. McDonald and his team from Merchant & Gould were asked to substitute as counsel and try the issues that remained as well as handle any appeals. While the case initially resulted in an infringement verdict and judgment, Rudolph scored two important wins at trial: infringement as to the three other accused systems was found only under the doctrine of equivalents, and the damages award was well under the amount sought by plaintiff. Mr. McDonald argued the appeal. Rudolph prevailed on virtually all issues raised on appeal, where the CAFC reversed the findings of infringement as to the three products at issue at trial, reversed findings of willful infringement, vacated the treble damages award, and remanded for further proceedings.  

ePlus, Inc. v Lawson Software, 764 F. Supp.2d 807 (E.D. Va. 2011)(Judge Payne).  Mr. McDonald was lead trial counsel for the defendant, a business software provider.  The plaintiff owned patents involving electronic commerce, and had collected over $54 million from other software companies, following two previous jury trials.  The case was tried to a jury in January 2011 in the "rocket docket" of the Eastern District of Virginia federal court.  The jury returned a split verdict on infringement.  Importantly, $0 damages were awarded as the result of favorable pre-trial discovery rulings including sanctions against the plaintiff under Federal Rule of Civil Procedure 37 (see above cite).  Lawson was later acquired by Infor. Decisions by the Federal Circuit Court of Appeals affirmed the award of no damages, and otherwise were favorable to Lawson/Infor.  

For Your Ease Only, Inc v. Calgon Carbon Corp. et al (No. 07-4034, 7th Cir. March 31, 2009) Mr. McDonald is lead trial counsel for For Your Ease Only, Inc., whose president is Lori Greiner, a “shark” on the ABC-TV show Shark Tank.  Ms. Greiner, known as the “Queen of QVC,” created anti-tarnish jewelry boxes successfully sold on QVC. For Your Ease Only (FYEO) sued competitors Calgon Carbon Corp., Product Concepts Company (PCC), and Mark Schneider for tortious interference with business relations arising from the defendants' false assertions of patent infringement.

The patent owner dismissed its patent infringement claim in view of the Federal Circuit's affirmance of the PTO's rejections of all of the original claims issued in its patent. Even though Calgon was the owner of the (now invalid) patent at issue, with FYEO's claims still pending, the case settled with a payment by Calgon to FYEO of $4.3 million.   

Another defendant, Mark Schneider, moved to Costa Rica before a final judgment was entered against him and his company, PCC. The Northern Illinois District Court found that PCC fraudulently transferred its main asset-the right to $382,000 in payments from the Home Shopping Network for sales of competing jewelry boxes- to an entity called Sevenquest, LLC, also owned by Schneider, but denied relief.  On appeal the Seventh Circuit, Wood, J., found in favor of For Your Ease Only, and remanded the case to the district court for further proceedings, paving the way for FYEO to recover the $382,000 sought.

Snap-Saver LLC v. Rubbermaid (E.D. Wis. Judge Shabazz).  Mr. McDonald was lead trial counsel for the plaintiff, then a small company and the exclusive licensee for a patent on a food storage system involving lids that connect to bowls.  Plaintiff brought the case against Newell Rubbermaid and Rubbermaid Inc.  Following a favorable summary judgment decision regarding infringement, and on the eve of trial, the case settled. The confidential settlement included a consent judgment in which the patent's validity was conceded.  Rubbermaid's Premier and Easy Find Lids product lines were involved.  The case was filed in the Western District of Wisconsin, one of the nation's fastest jurisdictions for patent cases. 

SoundBite Communications Inc v. Universal Recovery Systems, Inc. (D. Mass. 2007 (Judge Young) & D. Minn. 2008, (Judge Kyle)) Represented patent owner sued for tortious interference for sending letter regarding infringement received by plaintiff about to launch IPO seeking trebled damages of $60 million. Following countersuit for infringement and seeking to rescind statement of non-liability, case settled.

Mostly Memories Inc. v. For Your Ease Only Inc. and QVC Inc. (N.D. Ill 2005, Judge Castillo) Represented defendant FYEO. Client was sued for 47 counts of copyright infringement and several related claims. During my deposition of plaintiffs' president, the president recanted several allegations of the complaint which she had verified under oath. Plaintiffs' counsel stopped the deposition and moved to voluntarily dismiss all of the plaintiff's claims with prejudice in view of the admissions. The motion was granted. When the district court initially denied our request for fees and dismissed our counterclaims without prejudice to refiling in Missouri, we appealed to the Seventh Circuit and won a reversal with instructions to award fees under the Copyright Act and reinstate our counterclaim. Mostly Memories, Inc. v. For Your. Ease Only, Inc., 526 F.3d 1093 (7th Cir. May 27, 2008). The Seventh Circuit found that For Your Ease Only was entitled to attorney's fees as the prevailing party even though the plaintiff voluntarily dismissed its claims. The case continued regarding For Your Ease Only's counterclaims and settled.

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.

Susan Maxwell v. J. Baker, Melville Corp. K-Mart, 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 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 tortious 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, the case settled favorably.

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.

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.

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.

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.

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

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

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.


MEDIA CENTER

All Media
Press Releases
8/15/17
Seventeen Merchant & Gould Attorneys Named Best Lawyers© 2018
Merchant & Gould is pleased to announce that seventeen attorneys from three of its office locations have been included in The Best Lawyers in America© 2018.Best Lawyers compiles lists of outstanding attorneys by conducting peer-reviewed surveys in ...
News Alerts
7/14/17
Impressions from the Heartland
The Supreme Court recently issued two opinions changing patent law in ways that will affect a number of companies in Minnesota.   Is it Good-Bye, Eastern Texas? First and foremost, in TC Heartland v. Kraft Foods, the Supreme Court overruled 30 ...
Press Releases
6/6/17
Merchant & Gould Listed in IAM Patent 1000
Three Merchant & Gould offices and fourteen individuals were recognized in the IAM Patent 1000 list of “the world’s leading patent professionals” for 2017.In its rankings of firms and individuals, IAM Patent 1000 includes Merchant & ...
Press Releases
10/17/16
Merchant & Gould Ranked in IAM Patent 1000
Merchant & Gould's patent practice has been recognized in this year's edition of IAM Patent 1000, a publication by Intellectual Asset Management that lists the world’s leading patent professionals. In its 2016 rankings of firms and individuals, ...
Press Releases
9/22/16
Daniel McDonald Elected Chair of the University of Minnesota Alumni Association Board of Directors
Merchant & Gould is pleased to announce that senior litigation partner Daniel McDonald has officially assumed the role of 2016-2017 chair of the Board of Directors for the University of Minnesota Alumni Association.Dan was elected chair earlier this year, ...
Press Releases
9/22/16
Fourteen Merchant & Gould Attorneys Named 2017 Best Lawyers©
Merchant & Gould is pleased to announce that fourteen 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 ...
Press Releases
2/4/16
Merchant & Gould Successfully Represents Rudolph Technologies Before Trial Court and on Appeal, Gaining Quick Affirmance of $14 Million Patent Infringement Judgment
Merchant & Gould is pleased to have represented Rudolph Technologies, Inc. in recently securing an appellate victory in a patent infringement dispute with Camtek, Ltd. over semiconductor chip inspection technology.On Feb. 1, the U.S. Court of Appeals for ...
Articles
1/11/16
Recovery of Expert Fees Driven by More Than Octane
Attorneys Dan McDonald and Linhda Nguyen co-authored an article for the American Bar Association  Intellectual Property Litigation newsletter about awarding expert fees in patent litigation. Click the title below to read the full article on the ABA website. Recovery ...
Press Releases
12/7/15
Dan McDonald chosen as an Attorney of the Year by Minnesota Lawyer
Daniel W. McDonald, a partner at the intellectual property law firm Merchant & Gould, has been selected as an “Attorney of the Year 2015” by Minnesota Lawyer.Attorneys are chosen for this award based on their leadership in professional associations, ...
Events
8/26/15
Gender Issues in Intellectual Property Disputes - Live Webcast CLE
The Story Behind Maxwell v. J. Baker: A Case Study of Gender Issues in Intellectual Property Disputes Susan Maxwell will describe her perspective as a successful woman inventor on the legal issues encountered throughout the life of her patent. The issues begin ...
Press Releases
8/17/15
Thirteen Merchant & Gould Attorneys Included in The Best Lawyers in America© 2016
Merchant & Gould announced today that thirteen attorneys have been included in The Best Lawyers in America© 2016. Best Lawyers compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their ...
Articles
1/21/15
M&G Team Secures IPR Win For Medtronic Against Bosch.
On January 15, 2015, Merchant & Gould secured three significant victories for Medtronic Inc., at the Patent Trial and Appeal Board (the “PTAB” or “Board”) of the U.S. Patent and Trademark Office. In the three inter partes review ...
Press Releases
11/12/13
Merchant & Gould Secures Limited Damages in Appeal for Semiconductor Patent Case
Federal Circuit overturns District Court decision in favor of Rudolph Technologies Inc. Merchant & Gould, a leading intellectual property law firm, announced today that two products of its client, Rudolph Technologies Inc., were found to not infringe ...
White Papers
6/19/13
SAP America, Inc. v. Versata Development Group, Inc.: PTAB Invalidates Claims in Its First Transitional Program for Covered Business Method Patents – But Not Because of the Prior Art
In its first ruling under the newly implemented American Invents Act (AIA) Transitional Program for Covered Business Method Patents, the Patent Trial and Appeal Board (PTAB) invalidated Versata’s 6,553,350 (‘350) patent.  In reaching its decision, ...
Press Releases
5/28/13
M&G files amicus brief on behalf of the Association of Patent Law Firms
The Association for Patent Law Firms (APLF) asked Merchant & Gould to write a brief on its behalf as amicus curiae supporting a petition for rehearing en banc of the Federal Circuit's March 31, 2003 decision in Hoffmann-La Roche, Inc. v. Promega Corp., ...
Articles
2/26/13
Should your company enlist patent privateers?
Click here to read article in which Dan McDonald was quoted.
Press Releases
1/11/13
Merchant & Gould Partner Dan McDonald Authors Executive Book on Tactics for Protecting Against NPE (Patent “Troll”) Lawsuits
Intellectual property law firm Merchant & Gould today announced that Daniel McDonald, a partner in the firm’s Minneapolis office, has published a book about how companies can become better protected against lawsuits brought by non-practicing entities ...
Press Releases
10/1/12
Twelve Merchant & Gould Attorneys Named 2013 Best Lawyers in America
Merchant & Gould, an intellectual property law firm, today announced that 12 of the firm’s attorneys are named by their peers in The Best Lawyers in America 2013® (Copyright 2012 by Woodward/White, Inc., of Aiken, SC). Merchant & Gould ...
Articles
8/4/12
Business forum: Stemming the tidal wave of patent claims
Click here to view article
Articles
5/25/12
Twitter, Others Beat Messaging Co.'s Patent Suit
News Alerts
4/13/12
August Tech patent suit results in big contempt fine for Israeli rival
Click here to read article published in the Minneapolis St. Paul Business Journal discussing the recent victory for M&G client, Rudolph Technologies.
Articles
4/9/12
Tough Sanctions
Click here to view quote from Dan McDonald in an article which appeared in the Minnesota Lawyer discussing the favorable decision for M&G client, Rudolph Technologies
Press Releases
4/2/12
Merchant & Gould Client Rudolph Technologies Awarded $1.29 Million After Judge Finds Camtek in Violation of Injunction Sanctions Include Double Damages Plus Attorney Fees
Merchant & Gould, an intellectual property law firm, today announced that its client Rudolph Technologies has been awarded $1.29 million, plus attorney’s fees, as a result of a contempt finding against its adversary, Camtek Ltd. Minnesota U.S. District ...
Articles
3/27/12
Camtek Fined $1.3M For Violating Ban On Computer Chip Sales
Articles
12/30/11
Federal Circuit Opens Door To Bad-Faith Penalties Against NPEs
Click here to read article co-authored by Dan McDonald and Joe Lee appearing in Executive Counsel.
Press Releases
8/22/11
16 Merchant & Gould Attorneys Named 2011 Super Lawyers
Firm Also Recognizes Nine Rising Stars Merchant & Gould, an intellectual property law firm, today announced that 16 of the firm's attorneys are named Super Lawyers in 2011. The attorneys are recognized for excellence in intellectual property law and ...
Press Releases
5/24/11
Merchant & Gould Client: For Your Ease Only is Paid $4.3 Million Under Settlement, Concluding 9-Year Patent Litigation Battle
Calgon Carbon Corporation Pays Settlement, Exits the Anti-Tarnish Jewelry Organizer Business, and Sends a Letter of Apology to QVC; Settlement Benefits Lori Greiner ® Jewelry Organizers Merchant & Gould, an intellectual property law ...
Press Releases
7/26/10
26 Merchant & Gould Attorneys Named 2010 Super Lawyers
Merchant & Gould, an intellectual property law firm, today announced that 26 of the firm's attorneys are named Super Lawyers in 2010. The attorneys are recognized for excellence in intellectual property law and IP litigation. Each year, no more than ...
Press Releases
3/5/09
Merchant & Gould Scores Patent Litigation Victory for Rudolph Technologies, Inc.
Plaintiff Awarded $6.8 Million in Damages for Infringement of Microchip Patent Merchant & Gould, an intellectual property law firm, today announced it has won a major patent litigation victory on behalf of Rudolph Technologies, Inc. over Camtek, ...
Articles
5/1/08
Early assessment can streamline patent litigation
Click here to read article by Dan McDonald in Upsizemag.com.
Articles
12/4/07
Beyond Rule 11: The Case For Full Early Assessment
White Papers
5/1/07
Recent Federal Circuit Sandisk Decision Broadly Applies Medimmune, Giving Potential Licensees New Leverage
The Supreme Court’s MedImmune decision, and the Federal Circuit’s interpretation of it in SanDisk, changed the landscape of the relationship among patent owners, licensees, and potential licensees. In the wake of these decisions, the ...
Press Releases
8/1/06
Twelve Merchant & Gould Attorneys Named 2006 Super Lawyers by Minnesota Law & Politics magazine
Merchant & Gould, an intellectual property and litigation law firm, announced that twelve of the firm's attorneys were recognized as Super Lawyers in the August/September issue of Minnesota Law & Politics magazine.The Super Lawyers selected ...
Press Releases
6/23/06
McDonald of Merchant & Gould Recognized as a Top IP Litigator in Minnesota
Merchant & Gould, an intellectual property and litigation law firm, announced that Dan McDonald has been named as a top intellectual property litigator in Minnesota for the second consecutive year by Chambers USA, an international publisher of legal resources.In ...
Press Releases
6/1/05
McDonald of Merchant & Gould Recognized as Leading IP Attorney in Minnesota
Merchant & Gould, an intellectual property and litigation law firm, announced that Dan McDonald has been named as one of the ten leading intellectual property litigators in Minnesota by Chambers USA, an international publisher of legal resources.In private ...
Press Releases
5/2/05
Merchant & Gould Named a Top Trademark Filer by NameProtect in Annual Ranking
Merchant & Gould is pleased to announce it has been named one of the top trademark law firms in the United States for the third consecutive year by NameProtect . The ranking appears in the annual Name Protect Trademark Insider ® 2004 report, ...
Articles
4/18/05
Copyright Infringement: Risks Are Increasing Online
Articles
4/1/04
Practical and Legal Issues in Utilization of Non-attorney Technologists: A Litigation Perspective
News Alerts
10/1/03
Smart Pills - Setting Rules After Rambus
Articles
1/20/03
Protect the better mousetrap
Press Releases
Bodine, McDonald and Seifert of Merchant & Gould Recognized as Top IP Attorneys by Chambers USA
Merchant & Gould, an intellectual property law firm, announced that Brian Bodine, Dan McDonald and Richard Siefert have been named top intellectual property attorneys by Chambers USA, an international publisher of legal resources.Brian Bodine, whom peers ...