Our solutions will match your unique business, technology, and culture

Attorney Erin Overom Dungan headshot

Erin Overom Dungan

Contact Me:

Biography

Communication is the key to any great relationship and the foundation of my practice. I pride myself on keeping my clients informed and in the loop. I have an extensive background in technology and all areas of IP law, and enjoy teaching my clients the intricacies of IP and legal procedure while guiding them through their legal pursuits and challenges. For me, being an IP attorney allows me to combine disparate sides of my personality - the puzzle solving and personal, and the argumentative and strategic. 

In addition to my intellectual property litigation practice, I focus on giving back to the educational institutions that helped shape my career. I serve on the Board of Trustees for the Marshall School in Duluth, Minnesota, and as an alumni undergraduate applicant interviewer for Northwestern and Stanford Universities. 

Education

  • Santa Clara University School of Law, Santa Clara, California
    • J.D.
    • Honors: Munich Summer Abroad Program with Professor Donald Chisum, International and Comparative Intellectual Property Law
  • Stanford University
    • M.S.E.
    • Major: Biomechanical Engineering
  • Northwestern University
    • B.S.
    • Major: Biomedical Engineering

Practice Areas

  • Technology & IP Law

Bar Admissions

  • Minnesota
  • California
  • U.S. Patent and Trademark Office
  • U.S. District Court District of Minnesota
  • U.S. District Court Northern District of California
  • U.S. District Court Southern District of California
  • U.S. District Court Eastern District of California
  • U.S. District Court Central District of California
  • U.S. District Court Eastern District of Wisconsin
  • U.S. District Court Western District of Tennessee
  • U.S. Court of Appeals 8th Circuit
  • U.S. Court of Appeals 9th Circuit
  • U.S. Court of Appeals Federal Circuit

Honors

  • MSBA North Star Lawyer – for Pro Bono Service, 2014-2015, 2017

Representative Matters

Patent

  • Represent patent owner in infringement actions relating to video game controller technology;
  • Represent patent owner in infringement actions relating to t-shirt transfer products;
  • Advise manufacturer of cooling products on patent protection strategies;
  • Represented accused infringer in a patent action relating to swimming pool leak detection technology;
  • Represented patent owner in an infringement action relating to LED light technology;
  • Represented pharmaceutical company in multiple Federal Circuit appeals following post-grant proceedings;
  • Represented patent owner in an infringement action involving extrusion technology;
  • Represented patent owner in an infringement action involving data storage technology;
  • Represented accused infringer in a patent action involving data storage technology;
  • Represented patent owner in a Federal Circuit appeal following post-grant proceedings relating to patents for data storage technology;
  • Represented patent owner in an infringement action relating to point of sale (POS) systems;
  • Represented complainant in a patent infringement action related to data storage technology before the U.S. International Trade Commission;
  • Represented accused infringer in a patent action and co-pending IPR relating to precision agriculture technology. Successfully invalidated all claims of the three asserted patents in IPR and ultimately a stipulated dismissal of the litigation;
  • Represented accused infringer in a patent action relating to vascular stent technology. Obtained complete stay of district court proceeding pending resolution of IPR, including all appeals;
  • Represented accused infringer in a patent action related to dialysis machines;
  • Represented accused infringer in a patent action relating to card personalization technology;
  • Represented accused infringer in a patent action relating to electronic pollbook systems;
  • Represented patent owner in an infringement action related to devices used in spinal surgery;
  • Represented select respondents in a patent infringement action related to flash memory before the U.S. International Trade Commission, which also included antitrust-related defenses.

Trademark/Lanham Act

  • Advise non-profit charitable fundraising organization on trademark protection matters;
  • Represented defendant in a Lanham Act and copyright infringement action involving stationery and notepads;
  • Represented defendant/counterclaim-plaintiff in a Lanham Act action involving humidity control technology;
  • Represented owner of trademarks for card issuance solutions in an action for trademark infringement and breach of prior settlement agreement;
  • Defended reseller of network equipment against claims of trademark infringement and counterfeiting;
  • Represented a Fortune 500 multinational corporation in a trademark infringement action related to re-positional notes;
  • Represented a medical device company in a trademark infringement action related to programmable vests used to provide airway clearance treatment;
  • Represented defendant in a trademark infringement action relating to tire technology. Obtained dismissal with prejudice of Plaintiff’s complaint for lack of subject matter jurisdiction.

Copyright

  • Represented defendant in a Lanham Act and copyright infringement action involving stationery and notepads;
  • Represented accused infringer against claims of copyright infringement relating to photographs;
  • Represented photographer in seeking compensation for unauthorized use of photographs;
  • Advised client in the educational sector regarding safe harbor provisions afforded Internet Service Providers under the Digital Millennium Copyright Act and regarding compliance with anti-infringement provisions of the Higher Education Opportunity Act;
  • Advised client in the dental industry regarding safe harbor provisions afforded to Internet Service Providers under the Digital Millennium Copyright Act;
  • Developed and implemented copyright strategy for protecting original designs for manufactured quartz surfaces.

Complex Commercial Litigation

  • Representing life sciences company in pursuit of trade secret misappropriation claims relating to cell culture devices;
  • Represented plaintiff in Walker Process action based in part on claims of inequitable conduct and patent misuse;
  • Obtained complete dismissal of seven figure breach of patent license agreement claim following week-long arbitration hearing;
  • Represented client in a patent license dispute regarding tire inventory planning software. Defeated motion for TRO and obtained dismissal of action for lack of personal jurisdiction.

Publications

  • Motykie GD, Caprini JA, Arcelus JI, Reyna JJ, Overom E, Mokhtee D, Evaluation of therapeutic compression stockings in the treatment of chronic venous insufficiency, Dermatol. Surg. 1999 Feb; 25(2): 116-20.
  • Bragg RW, Macmahon JM, Overom EK, Yerby SA, Matheson GO, Carter DR, Andriacchi TP, Failure and fatigue characteristics of adhesive athletic tape, Med Sci Sports Exerc. 2002 Mar; 34(3): 403-10.

Live Events

  • Guest Lecturer, Careers in Chemistry, University of Minnesota-Duluth, Chemistry Department (2014)