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Andrew J. Lagatta

he / him / his

Partner

Andrew  J. Lagatta photo

As an intellectual property lawyer who focuses on a wide range of patent matters, Andy enjoys working with large companies to help develop and enforce patent portfolios. As chair of M&G’s post-grant practice group, Andy is well-versed in all aspects of post-grant patent challenge proceedings, including reexamination and post-grant trial proceedings, as well as PTAB appeals and reissue applications. Andy also serves as vice-chair of Merchant & Gould’s electrical and software practice group and has extensive patent prosecution and counseling experience.

As an intellectual property lawyer who focuses on a wide range of patent matters, Andrew (Andy) enjoys working with large companies to help develop strong and enforceable patent portfolios, as well as start-up companies and individual inventors who have good ideas but need a forward-thinking legal strategy to protect R&D investment and attract investors.

Andy provides intellectual property counseling, analyzes patentability and clearance issues, and drafts and prosecutes patent applications. He has technical experience in diverse electrical, electronic, and mechanical technology fields.  Andy has particular expertise in areas including network security and system virtualization, as well as data storage technologies, data science (including various machine learning systems), and Internet of Things devices.  Andy’s technical background spans a range of technologies including computer architecture, electronic control systems, medical devices, communications networks and protocols, power distribution systems, database management systems, operating systems, digital content encryption and distribution, and business methods. As part of that practice, Andy has successfully developed licensed patent portfolios for established companies, and has created IP protection strategies for several start-up companies that match the company’s growth goals and timing.

Manages U.S. drafting and prosecution of a significant patent portfolio for a retailer, focusing on data science, supply chain, and technology services/infrastructure technologies.

Manages U.S. prosecution of large portfolio of pending applications for an international electronics and electrical equipment company, focusing on printing, scanning, and networking technologies.

Manages utility patent portfolio development for a hardware and home improvement company, focusing on elec...

  • University of Minnesota Law School, J.D., 2005,

    cum laude, Editor- Minnesota Journal of Law, Science & Technology

  • University of Wisconsin Law School - Madison, B.S. Electrical and Computer Engineering, 2001

University of Minnesota Law School
    J.D., cum laude, 2005
Editor, Minnesota Journal of Law, Science & Technology

University of Wisconsin – Madison
    B.S. Electrical and Computer Engineering, 2001

U.S. District Court, District of Minnesota
U.S. Patent and Trademark Office
Minnesota State Bar

American Bar Association
Minnesota State Bar Association
American Intellectual Property Law Association
Minnesota Intellectual Property Law Association
Institute of Electrical and Electronics Engineers
Association of Computing Machinery

Selected for inclusion in Minnesota Rising Stars, 2012, 2014-2015

Publications

How Inter Partes Review Became A Valuable Tool So Quickly, Law360, co-authored with George C. Lewis, August 16, 2013

Leveraging New Patent Office Post Grant Proceedings To Decrease Litigation Risk and Cost, Intellectual Property Today, co-authored with Joe Lee and Rob Kalinsky, July, 2013

Intellectual Property Counseling and Litigation Treatise, Counseling in the Foreign Setting, Matthew Bender, 2009 (update co-author/editor)

Presentations

MITCHELL HAMLINE SCHOOL OF LAW, IP INSTITUTE 2021 ANNUAL SYMPOSIUM, Exploring the Boundaries of Statutory Subject Matter (April 2021), Panelist (Subject: Patent Eligibility of Artificial Intelligence)

Overcoming the Differences in Patent Practice between Japan, the US, and Europe, Speaker, October 2016

Inter Partes Review: Current Thinking on What, When, Why, and How Much, Speaker and Moderator, September 2016

New PTAB Rules, New Key Cases and Emerging Trends – Strategic Implications for PTAB Proceedings and Appeals (with Rachel Hughey), Speaker, Midwest IP Institute, September 2016  PowerPoint  |  Article

Cyberworld: Protecting Your Brand in Cyberspace, Speaker, April 2016

Staying Current in Inter Partes Review: Developments, Hot Topics, and What’s Next?, Panelist, February 2016

Surviving the Patent Killer: Navigating Post Issuance Proceedings, March 2015 (presenter)

Inter Partes Review: Strategies and Considerations for Use, October 2014 (presenter)

The America Invents Act, Continuing Legal Education, October 2011 (presenter)

The America Invents Act: Future Provisions, Continuing Legal Education, October 2011 (presenter)

Quoted

Quoted in Supreme Court Has Eye on IPR, Law Week Colorado, July 10, 2017