As a trial lawyer, Tom knows that cases are won and lost on details. He works hard to dig for facts that may not be readily available and then develop those facts into a winning strategy for his clients. His end goal is to help his clients succeed in their businesses by protecting and defending their market space.
Tom specializes in all aspects of intellectual property litigation, including patent, trademark, and copyright litigation. He has successfully litigated patent cases from sophisticated turf care equipment, e-commerce patents, and medical devices to adjustable dumbbells, construction tools, and retractable screen doors. He also has experience with complex class action cases dealing with chemical technologies.
At Merchant & Gould, Tom is responsible for litigation training. He has done pro bono housing work on behalf of the Volunteer Lawyers Network. In his free time, Tom likes to hunt, fish, ride motorcycles, ATVs and snowmobiles, and go downhill and water skiing.
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.
Cooper Notification, Inc. v. Federal Signal Corp., et al., 867 F. Supp.2d 485 (D. Del. 2012). Tom and the M&G team successfully represented Federal Signal in a patent infringement lawsuit related to a software-based, alert-notification technology. The M&G team combined its litigation and U.S. Patent & Trademark Office experience to attack the patent on two fronts: in court and in the Patent Office. This combined strategy allowed the M&G team to obtain summary judgment of no infringement for Federal Signal. Additionally, the team recovered over $20,000 for Federal Signal in sanctions against the plaintiff for its discovery misconduct.
W.L. Gore & Assoc., Inc. v. Medtronic, Inc., 874 F. Supp.2d 526 (E.D. VA 2012). Tom and the M&G team successfully represented Medtronic in a patent infringement case involving stent-graft technology where Gore claimed damages in excess of $85 million dollars. Tom’s deposition of Gore’s expert effectively prevented Gore from calling its expert to rebut Medtronic’s invalidity case. Moreover, the M&G team was able to significantly reduce the potential damages exposure prior to trial. The case was tried in the Eastern District of Virginia court in February 2012. The court ruled in favor M&G’s client finding that Medtronic did not infringe the patent.
Tom is an integral part of the Merchant & Gould team that represents a leading manufacturer of commercial and residential lawn care equipment, which includes technology ranging from high-tech commercial golf course equipment to consumer yard-care equipment. Tom, along with members of the team, has successfully represented this client against major competitors. For example, in 2010, Tom along with the M&G team, successfully resolved a multi-patent, multi-court litigation for this client. The M&G team employed its experience in litigation and U.S. Patent and Trademark Office practice to file reexaminations to stay the litigation and strengthen its client’s position. The Patent Office confirmed the patentability of our client’s patent claims, while rejecting the patentability of the competitor's patent claims. With this multifaceted approach, the case was resolved favorably for our client.
In 2008, Tom co-chaired a federal patent jury trial against Hasbro, Inc., one of the largest toy companies in the U.S. After a six day trial, the jury returned a verdict in favor of Tom's client. Leading up to trial, Tom and his colleague successfully defeated an inventorship challenge, won the Markman hearing obtaining a favorable claim construction, and defeated defendant's summary judgment motion on marking. Moreover, Tom successfully precluded all of defendant's prior-art invalidity defenses.
In 2005, Tom successfully defended a patent infringement action against a client by getting the case dismissed in the preliminary stages. The technology concerned construction tools for dry wall.
In 2005, Tom was an integral part of a Merchant & Gould team that successfully defended a major home improvement retailer in a trademark dispute against Home Depot, Inc. The matter was settled favorably for the firm's client.
Tom has successfully enforced patents related to selectable weight dumbbells against two competitors. The competitors were either forced to take a license or stop selling the competing product.
Law clerk for the Honorable Timothy J. McManus, Minnesota District Court, Dakota County
"A Sea Change in Patent Law," Twin Cities Business, Aug. 26, 2015