Speaking Engagements
PTAB Proceedings – Top Tips to Avoid Tripping Up Before the PTAB
Midwest IP Institute (2019)
Inter Partes Review after Oil States and SAS Institute
Institute of Patent and Trade Mark Attorneys of Australia, IPTA (2018)
Navigating the Sea Changes in Patent Enforcement and PTAB Practice
Midwest IP Institute, Minneapolis (2018)
Oil States and SAS Institute Decisions – Do You Need to Change Your IPR Strategy?
Minnesota CLE (2018)
U.S. Patent Practice After Five Years of Inter Partes Review
Institute of Patent and Trade Mark Attorneys of Australia, Minnesota CLE (2018)
U.S. Patent Practice After Five Years of Inter Partes Review
Institute of Patent and Trade Mark Attorneys of Australia, (IPTA) (2017)
PTAB Practice: Discovery in Patent Office Trials
Practicing Law Institute, New York (2017)
Strategies for IPR: Petitioners and Patent Owners
Midwest IP Institute, Minneapolis (2017)
Patent Procurement and Patent Enforcement in Our Transformative Environment
Webinar with Robins Kaplan (2017)
PTAB Current Issues
The Naples Patent Experts Roundtable, Naples (2017)
Ready for a Challenge? The Impact of IPRs on Patent Management
Iowa Intellectual Property Law Association, Riverside (2016)
The Efficacy of Post-Grant Challenges in Patent Litigation
MinnCLE Midwest IP Institute, Minneapolis (2016)
Rules of the Game: An Update On Practice and Procedures in PTAB
AIPLA Spring Meeting, Minneapolis (2016)
Securing Intellectual Property Protection for 3D Printed Models and Devices
MD&M Minneapolis Conference (2016)
PTAB Update
Minnesota CLE, Minneapolis (2016)
Posturing IPRs for Early Settlement
Patexia Webinar Series (2016)
Integrating Your PTAB and District Court Strategies
Midwest IP Institute, Minneapolis (2015)
PTAB Practice: Petitions and Preliminary Response Strategies
Practicing Law Institute, San Francisco (2015)
Patent Office Trials
New York State Bar Association, New York (2015)
Patent Office Trials under the America Invents Act
Association of Corporate Patent Counsel, Chicago (2014)
Petition Strategies for AIA Post-Grant Trials
AIPLA Spring Meeting, Philadelphia (2014)
PTAB Practice: Petitions and Preliminary Response Strategies
Practicing Law Institute, San Francisco (2014)
Effective PTAB Practice Under the AIA
Law Seminars International Best Practices in Patent Monetization, San Francisco (2014)
Patent Office Trials under the America Invents Act
The Institute of Patent and Trademark Attorneys of Australia (2014)
Patents, Policy, Politics and Practice: Are Non Practicing Entities Everything the Media Claims?
Minnesota CLE, Minneapolis (2013)
Observations from Recent Federal Circuit Decisions Affecting the PTO
Partnering in Patents, U.S. Patent & Trademark Office, Arlington (2013)
A Year of PTAB Post-Grant Proceedings
Minnesota CLE, Webinar (2013)
Prosecution in view of the New AIA Post-Grant Proceedings
Tips for the Prosecution Team (2013)
AIA Post-Grant Proceedings Overview
Midwest Intellectual Property Institute, Minnesota Intellectual Property Law Association, Minneapolis (2013)
AIA Post-Grant Trial Topics
AIPLA Spring Meeting, Seattle (2013)
Patent Office Trial Proceedings: A 3 Part Series on IPR and CBM Basics, Strategies, and Nuts and Bolts of Preparing and Filing an Inter Partes Review
Minnesota CLE, Minneapolis (2013)
The America Invents Act: Final USPTO Rules for 35 U.S.C. § 102
Client Webinar (2013)
Medtech Niche Markets
The Collaborative, Minneapolis (2013)
Post-Issuance Patent Review and the America Invents Act
Iowa Intellectual Property Law Association, Bettendorf (2012)
The New Post-Issuance Review Landscape
Midwest Intellectual Property Institute, Minnesota Intellectual Property Law Association, Minneapolis (2012)
Topics on Post-Grant Review
Minnesota Intellectual Property Law Association, covering recent changes in the law of post-issuance procedures, including post grant review, inter partes review, and ex parte reexamination. Discussed the role of the America Invents Act (AIA) in patent prosecution and litigation. Discussed recent cases including Marine Polymer v. Hemcon (Fed. Cir. 2012, en banc), and In re Baxter(Fed. Cir. 2012), (Minneapolis, 2012)
The New Patent Law
Minnesota State Bar Association CLE. Tim spoke on “New, Revised and Now-Extinct Post-Issuance Proceedings” This speech covered changes to post-issuance practice under the America Invents Act (AIA), in particular, post-grant review, inter partesreview, inter partes reexamination, ex parte reexamination, supplemental examination, and covered business methods under the AIA. (Minneapolis, 2011)
A Closer Look at Reexamination in 2011 and Beyond
10th Annual Midwest Intellectual Property Institute for Minnesota CLE (Minneapolis, 2011)
Strategic Use of Reexamination after Patent Reform – Post-Grant Review and Inter Partes Review
AIPLA Electronics & Computer Patent Law Summit, St. Paul, MN (2011)
Entrepreneurial Resources Session
Minnesota High Tech Association (MHTA) Spring Conference, Minneapolis (2011).
Tools, Materials & Adaptive Engineering
Minnesota Medtech Businesses Thrive in Myriad Therapies – The Collaborative Convergence Series on Medtech, Minneapolis (2011).
Recent Decisions on Joint Infringement and Extraterritoriality and their Impact on Computer Network Inventions
AIPLA Winter Meeting, Orlando (2011) 2010
Patent Reexamination: The New Strategy for Litigating Infringement Claims
Strafford CLE National Webinar (2010)
Advanced Patent Prosecution: Hot Topics in 2010: Statutory Subject Matter
Minnesota CLE (2010)
Intellectual Property and Venture Capital
The Collaborative (2010)
Litigation and Prosecution: Tips for the Litigation Team
Minneapolis (2010)
Comments on Proposed Changes in Restriction Practice
MIPLA Patent Prosecution Committee (2010)
Inter Partes Reexaminations: Aspects for Prosecution and Litigation
Midwest IP Institute, (2009)
Developments and Trends in Patent Law in 2009: Effects of KSR v. Teleflex on Patent Practice, Impact of Inter Partes Reexaminations on U.S. Patent Litigation, Patent Reform Law Proposals, Joint Infringement, and Extraterritoriality Issues
Clarion Legal at Thomson Reuters, Inver Grove Heights (2009)
Role of Intellectual Property in Financing Companies
The Collaborative (2009) 2008
In re Bilski (en banc Federal Circuit Decision)
MIPLA Patent Prosecution Committee(2008)
Administrative Deference: The Federal Court Deference to PTO Rulemaking
MIPLA Patent Prosecution Committee (2008)
Intellectual Property and Financing
The Collaborative, Minneapolis (2008)
IP Basics for the Busy CEO
Vistage Seminar, Minneapolis (2008)
The Use of Evidence in Patent Prosecution: Rebutting Obviousness after KSR v. Teleflex, AIPLA Electronics and Computer Law Roadshow
Washington D.C. and Minneapolis (2007)
Prosecution Practices for Litigation
Midwest IP Institute (2006)
Recent Decision on Obviousness – Dystar Textilefarben v. C.H. Patrick
MIPLA Patent Prosecution Committee (2006)
Patent Portfolio Topics for Medical Device Companies
Minneapolis (2006)
Quoted in MDDI Magazine Article: The Art of Intellectual Property (2006)
Inventor Issues Panel Discussion
Loyola Law School, Los Angeles (2006)
Basics of Contributory Infringement
MIPLA (2005)
Competitive Assessment from a Patent Perspective: Metrics and Strategies, Intellectual Asset Management
Minnesota State Bar Association (2005)
Claim Construction in view of Phillips v. AWH, MIPLA (2005)
Basics of Inducing Infringement
MIPLA Patent Prosecution Committee (2004)
Patenting Implantable Medical Devices Employing Software
Minnesota CLE (2004)
Competitive Analysis of Patent Portfolios, Intellectual Asset Management
Minnesota State Bar Association (2004)
IP Essentials
Hennepin County Bar Association (2004)
Hot Topics in Patent Prosecution: Honeywell v. Hamiliton Sundstrand and The Knorr-Bremse Case – Adverse Inferences No Longer Necessary From Assertions of Privilege
SLW Webinar (2004)
A Summary of Festo Decisions
MIPLA Patent Prosecution Committee (2003)
Pioneer Magnetics v. Micro Linear Corp. – A Precursor to Festo IX
MIPLA Patent Prosecution Committee (2003)
Patent Portfolio Management for Medical Device Companies
Biomedical Alley Conference, Minneapolis (2003)
Patent Damages from a Business Perspective
SLW CLE Webinar (2002)
Coordinating Domestic and International Patent Applications
MILE Seminar (2002)
IP for New Companies: Get Your IP Ready for Investment
The Collaborative, Minneapolis (2001)
E-Commerce and Business Method Patents
Minnesota State Bar Association, Minneapolis (2000)
Patent Portfolio Management: Getting Up to Speed
AUTM Central Regional Meeting, Cincinnati (2000)
Prosecution of Computer-Related Inventions from the Practitioner’s Perspective
AIPLA Advanced Computer and Electronics Patent Practice Seminar, San Francisco and New Orleans (2000)
Contested Matters
Everstar Merchandise Co. LTD v. Willis Electric Co., LTD. (2019-present)
- IPR counsel for multiple IPR and PGR proceedings
Boral Stone Products LLC v. D.A. Distribution, INC. et al (2019)
- Litigation support for district court patent infringement litigation
Borehead, LLC v. Ellingson Drainage, Inc. (2017-2018)
- Litigation support for district court patent infringement litigation
Sportbrain Holdings LLC v. Reemo Health LLC (2017-2018)
- Litigation support for district court patent litigation
Avita Medical Limited v. Renovacare Sciences Corp. (2017)
- Counsel for Patent Owner in IPR proceeding
Hamilton Beach Brands v. F’Real Foods, LLC (2016-present)
- Counsel for Patent Owner in multiple IPRs and other post-grant proceedings
Polygroup v. Willis Electric (2015-present)
- IPR and litigation co-counsel in multiple IPR and district court actions
Westway Feed Products, LLC v. Pellet Technology USA, LLC (2016)
- Counsel for Patent Owner in IPR
Unwired Planet v. Square (2015)
- Counsel for Patent Owner in multiple CBM patent reviews
HM Electronics v. 3M (2015/16)
- Counsel for Patent Owner 3M in multiple IPRs
Polygroup v. Willis Electric (2014)
- IPR and Reexamination Counsel in multiple IPR and reexamination proceedings
Unwired Planet v. Google (2014-present)
- Counsel for Patent Owner in parallel IPR and CBM trials
Universal Electronics, Inc. v. Universal Remote Control (2013/2014)
- Counsel for Petitioner in multiple IPRs and Litigation Support
Cardinal Commerce Corp. v. SignatureLink, Inc. (terminated by early settlement)
- Counsel for Petitioner in CBM
Pack Pharmaceuticals v. Alza Corporation (terminated by early settlement)
- Counsel for Petitioner in IPR
Adaptive Sonics v. Starkey Laboratories, Inc. (2012)
- Defensive due diligence, case strategy and posture, pre and post-suit communications
Toro v. MTD Products (2011)
- Patent law expert for Toro (patent owner) – litigation strategy with litigation team
Xerox Corp. v. Google, Inc., et al., (2010)
- Inter partes reexamination counsel
Barnesandnoble.com, llc v. Xerox Corp. (2010)
- Ex parte reexamination counsel
e.Digital v. Pentax (2010)
- Ex parte reexamination counsel
Northrop Grumman Systems Corporation v. Siemens Audiologische Technik GMBH et al. (2010)
- Defended client as second chair litigation support in patent infringement case
- Participated in filing defensive reexamination of asserted patent
- Presented defects in patent case to patent owner to achieve settlement
Auditory Licensing Corporation v. Starkey Laboratories, Inc. (2010)
- Patent license case involving complex patent license issue and pending reexaminations
- Defended client as second chair in litigation
- Provided counsel on several patents in reexamination and about to issue from complex prosecution
Quantum Labs v. Dr. Fresh (2010)
- Patent infringement case – orchestrated declaratory judgment action to settle case
Regents of the University of Minnesota v. AGA Medical Corp. (2010)
- Ex parte reexamination counsel
Netlist v. Google (ongoing)
- Interference counsel for Smart Technologies (non-party)
Vivatone Hearing Systems v. GN ReSound A/S (2008)
- Negotiated license agreement of patent portfolio to avoid suit in EDTX
- Advising client on complex prosecution and reexamination activities and license options
Hear-Wear Technologies v. Oticon (2007)
- Negotiated license agreement of patent portfolio to avoid suit
- Advising client on complex prosecution and reexamination activities and license options
Energy Transportation Group v. Siemens Hearing Instruments et al. (2007)
- Patent Infringement Case against eight industry co-defendants
- Second chair litigation support
- Presented case to magistrate judge in mediation
- Settled matter after Markman hearing
Data Recognition Corp. v. Jacobs (2006)
Data Recognition Corp. v. Scan Optics, Inc (2001)
- Patent infringement indemnification case
