Tom specializes in all aspects of intellectual property litigation, including patent, trademark, trade secret, and copyright litigation. His extensive experience with U.S. Patent & Trademark Office post-grant proceedings, such as IPRs and reexaminations, allows him to take the fight to court or the patent office, whichever is best for his client. Tom has successfully litigated high-stakes patent cases from sophisticated turf-care equipment, software patents, and medical devices to adjustable dumbbells, construction tools, and retractable screen doors and window hardware. He has also successfully litigated trade secret, trademark, and copyright cases for a variety of clients, and has experience with complex ITC cases dealing with chemical technologies. Tom is also experienced in defending clients sued by patent trolls where he uses his knowledge of the trolls and their pressure points to resolve those matters efficiently.

As a trial lawyer and registered patent attorney with nearly twenty years’ experience litigating IP matters, Tom knows that cases are won on the facts and the story they tell. He assembles a focused team to unearth not-readily-available facts and then weaves those facts into a winning legal strategy for his clients. His practical approach to problems and his ability to focus quickly on the best strategy avoids wasting time and money chasing distractions. His goal is to help his clients succeed in their businesses by protecting and defending their market space or by counseling them so they can avoid litigation altogether.

Tom’s extensive experience handling patent, trademark, trade secret, and copyright matters provides him with the unique ability to counsel clients on strategies to avoid IP litigation. He provides clients with freedom to operate opinions, helps clients design around competitor’s patent portfolios and performs due-diligence reviews for companies entering new markets or buying and selling businesses or technology to make sure they get what they pay for and avoid future litigation, or worse yet, an injunction.

At Merchant & Gould, Tom led the litigation-training program for almost a decade. He has done pro bono housing work on behalf of the Volunteer Lawyers Network. In his free time, Tom likes to spend time with his family, travel, hike, hunt, fish, ride motorcycles, ATVs and snowmobiles, play hockey, and go downhill and water skiing.

Representative Cases

Litigation

Carlson Pet Products, Inc. v. North States Industries, Inc., (MND), 17-CV-2529, January 1, 2020. Lead counsel for Defendant North States accused of willful patent infringement related to pet and child safety gates. Plaintiff Carlson Pet Products sought to recover damages and attorneys’ fees in addition to permanently enjoining North States from manufacturing and selling the accused products. Employing a combined U.S. Patent Office reexamination and litigation strategy, we successfully defeated Carlson Pet Product’s claims and forced Carlson to dismiss the case with prejudice and provide North States with a royalty-free license to its patent portfolio—all without paying Carlson any money. A total and complete victory for North States.

Metalcraft of Mayville, Inc. v. The Toro Company et al., (WIED), 2-16-cv-00544, May 5, 2016. Represented Toro in a patent infringement matter involving zero-turn, ride-on commercial mowers having suspended operator platforms.

Husqvarna AB et al. v. The Toro Company, (DED), 1-15-cv-00856, Sept. 22, 2015. Represented Toro in a patent infringement matter related to all-wheel drive walk-behind mowers.

Husqvarna AB v. The Toro Company, (MND), 0-15-cv-03204, Aug. 4, 2015. Represented Toro in a patent infringement matter related to walk-behind mowers. One patent related to a push-button electric start feature and the other related to the grass collector feature. Successfully moved to transfer the case to Minnesota from North Carolina and obtained a stay of the litigation pending reexamination of the asserted patents.

Proto Labs, Inc. v. ICO Products, LLC, (MND), 0-15-cv-02562, May 27, 2015. Lead counsel for ICO Products LLC accused of infringing four patents related to automated quotes for custom mold manufacturing. On a motion to dismiss, we received a favorable decision by the magistrate judge recommending that all 78 asserted claims of the four patents be held invalid as unpatentable under §101 and Alice. This favorable decision quickly led to the resolution of the case.

AJ Manufacturing, Inc. v. Hayfield Window & Door Co., (MND), 0-15-cv-01244, March 12, 2015. Lead counsel for Hayfield Window & Door, sued for patent infringement involving plastic window frame trim for corrugated buildings.

Creative Research & Development, Inc. et al. v. Amesbury Group, Inc., (Minn), 82-CV-15-1067, March 10, 2015. Successfully represented Amesbury Group in a case involving trade secret, breach of a technology agreement, and other unfair competition and equitable claims involving window hardware technology. After a two-week trial, the Court ruled in Amesbury’s favor zeroing out plaintiffs’ $72,000,000 damages claim. Notably, our team successfully excluded much of Plaintiffs’ damages expert’s testimony.

Smart Irrigation Solutions Inc. v. The Toro Company, (CACD), 8-15-cv-00084, Jan. 16, 2015. Lead counsel for Toro in a patent infringement case regarding smart irrigation technology and irrigation controllers.

Dri-Steem Corporation v. NEP, Inc. d/b/a Neptronic, (ORD), 1-14-cv-00194, Feb. 5, 2014. Lead counsel for the plaintiff in a patent infringement action related to humidifiers, specifically heat exchangers for the removal of condensate from a steam dispersion system. As part of its defense, Defendant filed two petitions for IPR challenging the validity of the patents. Through a focused patent owner’s preliminary response we successfully defended the IPR challenges convincing the Patent Trial and Appeal Board not to institute the IPRs. The plaintiff successfully enforced the patents against the competitor.

Ardent Mills, LLC v. Archer Daniels Midland Company, (KSD), 2-12-cv-02171, March 21, 2012. Represented Ardent Mills (Formerly ConAgra Brands) in a patent infringement case involving whole grain flour and processes for making refined flour.

Goldblatt Industries, LLC v. Menard, Inc., (KSD), 2-11-cv-02405, July 21, 2011. Represented Menard, Inc. in a design patent and trade dress infringement case related to hand tools.

BBY Solutions, Inc., Best Buy Stores, L.P. v. Justin Douglas, (MND) 11-cv-01984, July 20, 2011. Successfully enforced Best Buy’s Geek Squad^® trademark against an infringer.

Wright Manufacturing, Inc. v. The Toro Company et al., (MDD), 1-11-cv-01373, May 20, 2011. Represented Toro in a multi-patent infringement case involving riding lawn mowers.

BBY Solutions, Inc., Best Buy Stores, L.P. v. Martin Hanania d/b/a Geed Squad Computer Help, (MND) 11-cv-00623, March 10, 2011. Successfully enforced Best Buy’s Geek Squad^® trademark against an infringer.

Polaris Industries Inc. v. CFMOTO Powersports, Inc. et al., (MND), 0-10-cv-04362, Oct. 26, 2010. Represented Polaris Industries in a patent infringement and trade dress case involving side-by-side all-terrain vehicles.

W.L. Gore & Associates, Inc. v. Medtronic, Inc., et al., (VAED), 2-10-cv-00441, Sept. 3, 2010. 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.

BBY Solutions, Inc. (Best Buy) v. Andrew A. Clayton d/b/a Geek Squad Computer Repair Service, (MND), 0:10-cv-00062, Jan. 1, 2010. Successfully enforced Best Buy’s Geek Squad^® trademark against an infringer.

Cooper Notification Inc. v. Twitter Inc., et al., (DED), 1-09-cv-00865, Nov. 13, 2009. 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.

Southwire Company v. Prysmian Power Cables and Systems U.S.A., LLC, (GAND), 3-09-cv-00028, March 10, 2009. Represented Southwire Company in a patent infringement case related to self-healing cable.

Intellex, Inc. v. BodyForce, LLC, (MND), 0-07-cv-00170, Jan. 12, 2007. Represented Intellex in a patent infringement lawsuit involving adjustable dumbbell exercise equipment.

The Toro Company v. Textron, Inc. et al., (MND), 0-05-cv-01835, Aug. 15, 2005. Represented Toro in a patent infringement case involving hydraulic drives systems for large commercial mowers.

Textron Innovations Inc. v. Toro Company, (DED), 1-05-cv-00486, July 12, 2005. Represented Toro in a patent infringement matter involving gang-type golf course mowers designed to stripe golf courses and sports fields.

Bowling v. Hasbro, Inc., (RID), 1-05-cv-00229, May 24, 2005. Co-chaired a hard-fought federal patent jury trial against Hasbro, Inc., one of the largest toy companies in the U.S. involving novel game dice and the Monopoly^® Millennium board game. After a six-day trial, the jury returned a verdict in favor of Tom's client awarding Mr. Bowling nearly $1,000,000 in damages and interest. 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.

DE Technologies, Inc. v. Dell, Inc., (VAWD), 7-04-cv-00628, Oct. 27, 2004. Represented DE Technologies in a patent infringement matter related to international shipping methods and software.

Full Circle International, Inc. v. Wettstein et al., (MND), 0-04-cv-02710, May 18, 2004. Represented defendant in patent infringement case involving drywall tools.

Intellbell, Inc. v. North Pole Limited, et al., (MND), 0-04-cv-00169, Jan. 23, 2004. Represented plaintiff in patent infringement case involving adjustable dumbbell exercise equipment.

Larson Manufacturing Company of South Dakota v. AluminArt Products Limited, et al., (SDD), 4-03-cv-04244, Oct. 24, 2003. Represented AluminArt Products in a case involving screen doors having retractable screen.

Trophy Ridge, LLC v. Vital Bow Gear, et al., (MTD), 2-03-cv-00010, Feb. 19, 2003. Represented Trophy Ridge in a patent infringement case involving archery sights.

Automated Merch. Sys., Inc. v. Automatic Products, et al., (WVND), 3-02-cv-00082, Sept. 27, 2002. Represented Automated Merchandising in a patent infringement case involving optical sensors for vending machines.

Defended Clients From The following Patent Trolls & NPEs

Anuwave Technology

Aloft Media

Smart Irrigation Technology

Landmark Technology

MPHJ Technology

Encoditech LLC

Inter Partes Reviews

Petition for Inter Partes Review by Deeper, UAB (PTAB) IPR2018-01310, Paper 7 (Jan. 24, 2019) (designated as informative: Apr. 5, 2019)

Petition for Inter Partes Review by Coalition for Affordable Drugs III LLC (PTAB), IPR2015-01018, April 6, 2015.

Petition for Inter Partes Review by National Environmental Products Ltd. (PTAB), IPR2014-01502, Sept. 15, 2014.

Petition for Inter Partes Review by National Environmental Products Ltd. (PTAB), IPR2014-01503, Sept. 15, 2014.

Petition for Inter Partes Review by Medtronic, Inc. (PTAB), IPR2014-00488, March 6, 2014.

Petition for Inter Partes Review by Cardiocom LLC (PTAB), IPR2013-00449, July 15, 2013.

Petition for Inter Partes Review by Game Show Network, LLC (PTAB), IPR2013-00289, May 17, 2013.

Ex Parte Reexaminations

US Patent 7,076,307, Control No. 90/014,447 (Neuro and Cardiac Technologies, LLC v. LivaNova, Inc. and LivaNova USA, Inc.)

US. Patent 8,448,381, Control No. 90/014,068 (Carlson v. North States)

US Patent 9,458,668, Control No. 90/014,069 (Carlson v. North States)

US Patent 7,071,436, Control No. 90/013,330 (Husqvarna v. Toro)

US Patent 7,866,134, Control No. 90/013,329 (Husqvarna v. Toro)

US Patent 8,186,475, Control No. 90/013,805 (Metalcraft of Mayville v. Toro)

Education

University of Minnesota Law School
J.D., 2001, cum laude

Iowa State University
B.S. Chemical Engineering, 1998; Omega Chi Epsilon

University College of London
Chemical engineering course work, 1997

Admissions

United States District for the District of Minnesota
Northern District of Illinois, 2008
Eastern District of Wisconsin, 2005
District of South Dakota, 2004
U.S. Court of Appeals for the Federal Circuit, 2003
Minnesota State Bar, 2001
U.S. Patent and Trademark Office

Professional Affiliations

Minnesota State Bar Association
Federal Bar Association
Association for Corporate Growth
American Intellectual Property Law Association

Judicial Clerkship

Law clerk for the Honorable Timothy J. McManus, Minnesota District Court, Dakota County

Awards & Recognition

Best Lawyers in America by The Best Lawyers in America, 2021-2022
Selected for inclusion in Minnesota Rising Stars, 2007-2012

Publications & Speaking

Publications

Fish-finder patent case is the one that got away, Minnesota Lawyer, May 2, 2019

Fish finder company Vexilar successfully protects patent, quoted, Minneapolis/St. Paul Business Journal, April 19, 2019

PTAB Rulings Show Potential New Way To Defeat AIA Reviews, quoted, Law360, April 17, 2019

Preparing For High Court's Looming Oil States Decision, Law360, April 2018

Trade Secrets and the AIA: The Practical Considerations of Establishing Prior User Rights by Clear and Convincing Evidence, Part 1 and Part 2, Inside Counsel, co-authored with Emily Wessels, July 16, 2015

Three Fundamentals of Drafting a Petition for Inter Partes Review, co-authored with Brian McCall, IP Law Today, April 2015

What Features Matter in a Design Patent Case?, co-authored with Paige Stradley, Law360, February 2015

To Mark or Not To Mark? Forest Group, Inc. v. Bon Tool Co. Changes the Game, Intellectual Property Today, April 2010

One Year Later: The Impact of Seagate, Intellectual Property Today, December 2008

The Latest on In Re Seagate: Are Courts Restricting Plaintiffs' Allegations of Willful Infringement?, Patent Enforcement & Defense, May 2008