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Biography
For nearly thirty years, I have been helping clients reach their business goals. Whether in the courtroom, the Patent Office, or the boardroom, I will stand by you to protect your business by helping you enforce your technology rights or defend your right to use your technology. When my clients come to me, it is not necessarily about a patent related matter, though it is usually a starting point - it is typically about some external force that is negatively affecting their business, and they want my help handling it.
I help my clients work through intellectual property matters that their business success rests upon, and develop strategic and creative solutions in partnership with them. Sometimes the matter demands litigation, and I love the fight, but I also advise clients on alternative solutions to their problems when it makes business sense.
I am proud to work with the team at Padda Law Group. I have worked with each of our experienced lawyers for no less than six years, but in most cases over ten to twenty years. I look forward to getting to know your particular goals and helping you find the best outcome.
Education
- Northwestern University School of Law, Chicago, Illinois
- J.D. - 1993
- Honors: cum laude
- Northwestern University
- B.S. - 1990
- Honors: Tau Betta Pi
- Honors: Eastman Kodak Scholar
- Major: Electrical Engineering
Practice Areas
- Litigation
- IP Contracts & Licensing
- IP Consulting
- Prosecution
- Patent Trial and Appeal Board Proceedings
- Patent Litigation
- Trade Secret Litigation
- Copyright Litigation
- Trademark Litigation
- Technology Contract Litigation
Professional Associations
- American Bar Association, Member
- American Intellectual Property Law Association, Member
- Federal Bar Association, Member
- Minnesota State Bar Association, Member
- Minnesota Intellectual Property Law Association, Member
- Hennepin County Bar Association, Member
Bar Admissions
- Minnesota, 1993
- U.S. Patent and Trademark Office
- U.S. District Court District of Minnesota
- U.S. Court of Appeals Federal Circuit
- U.S. District Court Eastern District of Texas
- U.S. District Court District of Colorado
- U.S. District Court Eastern District of Michigan
- U.S. Supreme Court
Honors
- Recommended in Intellectual Property – Chambers USA, 2017
- Local Litigation Star – Benchmark Litigation, 2015-2018
- The Best Lawyers in America© – Litigation – Intellectual Property, 2015, 2019; Litigation – Patent, 2015-2019
- IP Star – Managing IP, 2013-2018
- Minnesota Super Lawyers® – 2014-2018
- Attorney of the Year – Minnesota Lawyer, 2013
- Matteucci Technical Excellence Award Honorable Mention – “The ROI of IP,” 2012 Web Coating & Handling Conference
Representative Matters
- Representing a company with MRI technology that the purchaser failed to commercialize post-acquisition
- Representing a company in patent infringement actions against 2 multinational companies relating to gaming technology
- Representing a company on breach of a licensing agreement on technology relating to eye surgery
- Representing life sciences company pursuing trade secret misappropriation claims relating to cell culture devices;
- Obtained multi-million-dollar jury verdict in favor of client, prevailing on all counts, in patent infringement action relating to inkjet dark fabric transfer technology;
- Represented accused infringer in a patent infringement action related to USB storage devices;
- Represented plaintiff in infringement matter relating to formatted magnetic data storage tapes; settled during trail;
- Won summary judgment of non-infringement on patent relating to self-nanoemulsified drug delivery system; affirmed on appeal;
- Represented plaintiff in an action involving a patent directed to electronic braking systems; successfully secured a Federal Circuit ruling of infringement and validity;
- Represented plaintiff in actions against several defendants involving a patent directed to the physical chemical structure of an animal nutrition product; obtained a jury verdict of willful infringement and obtained treble damages;
- Represented plaintiff in an action involving patents on mechanical seals for a gearbox; obtained a preliminary injunction and settled thereafter;
- Represented plaintiff in an action involving patents directed to decision-making software; case settled on terms favorable to client;
- Represented plaintiff in an action involving patents directed to web advertising and blogging; after arguing a Markman hearing, case settled with payment to client;
- Represented plaintiff on appeal at Federal Circuit in an action involving patents directed to wireless oximetry;
- Represented defendant in an action involving patents directed to accelerometers;
- Represented defendant in an action involving patents directed to wireless communication in medical devices; successfully defended defendant obtaining a favorable result;
- Represented defendant in an action involving patents directed to wireless data communications; successfully obtained a covenant not to sue after multi-day Markman hearing;
- Represented defendant in an action involving a patent related to internet software; obtained summary judgment of non-infringement;
- Represented defendant in an action involving patents relating to telecommunications; obtained a dismissal without having to file an answer;
- Represented defendant in an action involving a patent relating to a storage container; obtained a favorable result;
- Represented defendant in action involving patent related to photo sharing; obtained a dismissal of the case;
- Represented defendant in action relating to patent on computer storage systems; obtained favorable settlement and dismissal;
- Represented defendant in an action involving a patent related to fertilizer formulations; plaintiff stipulated to noninfringement based on the Court’s Markman order;
- Represented defendant in action involving patents relating to decision making software; case settled on terms favorable to client;
- Represented defendant in an action involving a patent directed to trading software; obtained a dismissal of the action;
- Represented defendant in an action involving patents directed to spinal fusion surgery; obtained a summary of non-infringement on the most important patent and settled the case favorably prior to trial;
- Represented defendant in action relating to patent directed to electronic monitoring systems; obtained summary judgment of non-infringement (affirmed at the Federal Circuit) and won award of $800,000 in attorney’s fees.
Classes & Seminars
- I Can Patent 2 + 2 - Can You? Important Business Implications Posed by The Expanded Scope of Patent Protection After State Street, 1999 Computer Law Institute, Minnesota State Bar Association Continuing Legal Education Program, 1999
- Making Order Out of Chaos: Basic Patents, Intellectual Property 101, Minnesota State Bar Association Continuing Legal Education Program, 2000
- "Software Patents, Procuring and Enforcing", Patent Resources Group, 2001 to 2019
- Taught patent law at William Mitchell, Hamline, and Univ. of St. Thomas for over ten years.
Published Works
- "USPTO Accelerated Examination: A Pre-Litigation Strategy", Patent Strategy & Management, March, 2008
- “Two views: Diagnostics firms may be worried but there are write arounds", MidCity News, 27 Mar, 2012
Fraternities or Sororities
- Tau Beta Pi