Patent Counseling and Litigation

The law firm of Carlson and Caspers, with its extensive trial experience, specializes in intellectual property (IP) protection and recovery. This singular focus is the key to our success in one area vital to our clients: protecting their IP.

Today, our firm stands at the forefront of patent counsel and litigation, representing Fortune 500 corporations and brilliant startups. With more patent trial experience in the District of Minnesota than any other firm, we are well-equipped to blend this extensive courtroom expertise with strategic business planning to protect vital intellectual property rights today and in the future.

Intellectual properties are strategic assets that drive revenue, deter competition, and attract investment. At Carlson Caspers, we understand complex industries’ unique challenges when defending these assets or challenging competitors’ claims. With deep technical expertise and innovative approaches, we have become trusted advisors to many companies across the following sectors:

• • Mechanical
  • Medical Devices
  • Pharmaceuticals, Biosimilars, and Nutraceuticals
  • Polymers, Chemicals, and Compositions
  • Software
  • Telecommunications, Wireless, and the Internet of Things

No matter your field, we will craft highly effective patent counseling and litigation strategies that support your business objectives–protecting your IP and positioning your business for success.

Our Patent Counseling and Litigation services are all-encompassing, beginning with portfolio strategy and licensing. Many of our clients retain us before they face legal issues with their IP, a practice we strongly encourage. We are committed to helping clients maximize their IP by creating business plans for enforcement and licensing, negotiating licenses, and conducting due diligence to support transactions. These services are designed to help clients avoid litigation altogether, demonstrating our commitment to your success.

However, not all litigation is avoidable, so we offer comprehensive litigation and dispute resolution services via the courtroom for clients needing patent protection. Our lawyers are distinguished for their extensive courtroom experience, providing representation from trial through appeal with a proven track record of success in the most complex patent cases. We closely collaborate with each client to ensure they enjoy the best chance of success in the courtroom. And we offer guidance through every step—from comprehensive pre-suit investigations to crafting effective prosecution strategies.

Creativity and adaptability are at the core of our practice. Every client’s business goals and industry are unique, and our attorneys excel at crafting solutions that deliver measurable results. From developing patent portfolios to brokering complex transactions, we focus on aligning legal strategies with broader business objectives.

At Carlson Caspers, we work as an extension of your team, integrating our unmatched patent counseling and litigation expertise with your organization’s strategic goals. Our proven, team-based approach involves close collaboration with your in-house counsel and subject-matter experts to craft tailored and effective strategies.

We emphasize prevention and early resolution, using insights from years of experience to craft proactive measures that protect your patent positions before issues arise. When disputes occur, we act swiftly, focusing on effective and efficient results and solutions outside the courtroom.

We also understand the pressures of managing resources. By balancing thorough preparation with efficient execution, we reduce financial and operational burdens, ensuring your team can focus on innovation while we safeguard your hard-won patents.

The Carlson Caspers Patent Counseling and Litigation team combines legal expertise with business acumen to ensure your organization receives a strong return on its intellectual property investments. Whether helping develop and protect patent portfolios or structuring innovative revenue-generating agreements, we are committed to delivering the insights and solutions you need to succeed in today’s competitive marketplace. Notable examples include:

• Exmark Manufacturing Co. v. Briggs & Stratton Corp.: Representing Exmark Manufacturing, a subsidiary of The Toro Company, Carlson Caspers secured a $14.38 million jury verdict for patent infringement concerning a lawnmower with flow control baffles. The court affirmed willful infringement, doubling the damages to $28.76 million, with an additional $5.96 million in interest. The Federal Circuit upheld this $34.72 million judgment, concluding a decade-long dispute.
• ADC Telecommunications’ OFDM Patent Portfolio Sale: Our firm assisted ADC Telecommunications in monetizing a pending patent application related to Orthogonal Frequency-Division Multiplexing (OFDM) technology. Through strategic patent prosecution and global marketing, the firm facilitated the sale of the HTC Corporation’s portfolio for $75 million. Carlson Caspers supported HTC in enforcement strategies post-transaction, contributing to favorable outcomes in subsequent litigation.
• Teva Pharmaceuticals USA, Inc. v. Purdue Pharma: In a significant victory, Carlson Caspers represented Teva Pharmaceuticals in challenging Purdue Pharma’s patents related to OxyContin®. The U.S. District Court for the Southern District of New York invalidated four of Purdue’s patents for lack of novelty and obviousness and found a fifth patent invalid for indefiniteness. This decision facilitated Teva’s ability to market a generic version of the pain medication.
• CSI Technology Inc. et al. v. Commtest Instruments Ltd. et al.: Carlson Caspers represented an Emerson Electric Company subsidiary in a patent infringement case involving machinery health maintenance vibration data analyzers. Despite the defendants’ attempts to invalidate the patents through reexamination proceedings, Carlson Caspers successfully navigated the process, maintaining the client’s claims for past damages and strengthening its patent rights, leading to a favorable settlement and licensing agreement.

Carlson Caspers distinguishes itself from other firms through deep expertise in intellectual property law and a proven ability to succeed in high-stakes situations like patent counseling and litigation. Our trial-tested attorneys combine industry-specific knowledge with innovative strategies to secure favorable outcomes.

But what truly sets us apart is our client-first approach. We align our strategies with your business priorities. By working seamlessly with your team, we provide unmatched counsel tailored to your needs. From navigating complex litigation to crafting proactive measures, we deliver an unwavering commitment to your success.