Highlights
- Secured for $14.5 million payment on patent infringement judgment following jury trial as lead trial counsel and lead appellate counsel, affirmed on appeal (semiconductor inspection systems)
- Lead trial counsel for defendant, $0 damages awarded to plaintiff patent owner seeking $90 million in Eastern Virginia “rocket docket” (three e-commerce patents)
- Secured dismissal of infringement claims and $4.3 million payment by patent owner to client accused ...
- University of Minnesota, J.D., 1985,
magna cum laude
- University of Minnesota, B.S. Electrical Engineering, 1982,
high distinction
- Georgia State Bar, 2021
- U.S. Patent and Trademark Office, 1986
- Minnesota State Bar and Federal Bars, 1985
- U.S. Courts of Appeal for the Seventh, Eighth, Tenth and Federal Circuits
- U.S. Supreme Court
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
Best Lawyer’s® Lawyer of the Year for 2020 in Litigation- Intellectual Property, Litigation – Patent and, Trademark Law
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, 2013-2024
IP Stars by Managing IP, 2013-2021
Leading Individuals in IP Litigation in Minnesota, Chambers USA
Selected for inclusion in Minnesota Super Lawyers, 2006-2019
AV peer review rating by Martindale-Hubbell
Presenter at Various Seminars Including
The Accidental Tourist: Examining Analogies in WesternGeco, Law360, May 23, 2018
An End To Systematically Undercompensating US Patentees?, Law360, December 20, 2017
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
Practical and Legal Issues in Utilization of Non-attorney Technologists: A Litigation Perspective, 2004 AIPLA Spring Meeting Presentation
Presentation on Trade Dress Protection in the Wake of the Supreme Court’s Traffix Decision , APLF Roundtable – July 2003
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
Reaching Across Oceans, Law Week Colorado, January 22, 2018
High Court Case Could Open New World Of Patent Damages, Law360, January 16, 2018
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
An End to systematically Undercompensating US Patentees?, Law360, December 20, 2017
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
Smart Pills: Setting Rules After Rambus, IP Law & Business – October 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)
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
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