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Tom is a trial lawyer and registered patent attorney with over 15 years of experience in patent litigation.  He has successfully defended companies in patent infringement cases related to mechanical, electrical and medical devices, as well as computer related technologies. He is experienced in defending large corporations against patent trolls. Tom also knows his way around the U.S. Patent Office and incorporates post grant review proceedings, including inter partes reviews, which play an important part in efficiently defending against patent infringement claims.

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.

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 an...

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

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

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

Best Lawyers in America by The Best Lawyers in America, 2021-2023
Selected for inclusion in Minnesota Rising Stars, 2007-2012

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 Reviewsquoted, 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

Quoted

Judge delivers defense verdict in $72M trade secrets case,” Minnesota Lawyer, Jan. 29, 2018.

“A Sea Change in Patent Law,” Twin Cities Business, Aug. 26, 2015.