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Overview
With a firm footing in both business counseling and patent litigation, Ken helps medical device and other technology companies identify, build, protect, and manage their valuable intellectual property assets.
Ken helps these businesses pursue sound strategies for IP litigation, particularly by developing technical strategies for patent litigation. He also counsels businesses on how to build successful strategies for their patent and trade secret portfolios, licensing, and product clearance, and helps them analyze validity and infringement concerns.
Ken understands the general counsel’s role well. He functioned in that capacity for a small cap medical device company for several years while a Dorsey partner, until the company was acquired by a Fortune 500 company.
Ken is a partner and Chair of Dorsey's Minneapolis Patent Group.
Education & Admissions
University of Minnesota Law School (J.D., 1993), magna cum laude; Order of the Coif; Minnesota Law Review: Articles Editor, 1992-93; Staff Member, 1991-92
University of California, Los Angeles (UCLA) (B.S., Biomaterials Engineering, Materials Science and Engineering, 1986), Alpha Chi Sigma
Admissions
- Minnesota
- United States Patent and Trademark Office
- U.S. Courts of Appeal for the Eighth, Tenth, and Federal Circuits
- U.S. District Courts for the Districts of Minnesota and Kansas
Clerkships
- U.S. Court of Appeals for the Eighth Circuit, Honorable Pasco M. Bowman, 1993-1994
Experience
Representative Litigation
- QXMédical, LLC v. Vascular Solutions LLC, Teleflex Innovations S.à.r.l., and Arrow International, Inc. (D. Minn.): Represent patent owners Vascular Solutions, Teleflex, and Arrow in declaratory judgment action relating to QXMédical’s infringement of patents relating to coronary guide extension catheters. Obtained summary judgment ruling that QXMédical infringes and that rejected QXMédical’s indefiniteness, recapture, and certain prior art-based defenses. Case awaits trial on remaining issues.
- Solutran, Inc. v. U.S. Bancorp and Elavon, Inc. (D. Minn. and Federal Circuit): Represented U.S. Bancorp and Elavon at trial and on appeal from a judgment of infringement of Solutran’s check processing patent. Federal Circuit reversed the judgment and invalidated Solutran’s patent.
- Primary Defense Counsel for Imation Corp. (Variety of Jurisdictions for Five-Year Period): Defended patent infringement lawsuits relating to electronic and data storage products. All cases either forced to dismissal or settled on very favorable terms (a total of $124,000 in payments for 30 patents).
- Medtronic, Inc. (U.S. Patent Office): Represented patent owner Medtronic in reexamination proceeding initiated by NuVasive, Inc., over a bone implant patent that Medtronic was suing NuVasive for infringing. Patent Office confirmed the patentability of all challenged claims of Medtronic’s patent, with no changes to any claim. During the proceeding, all of NuVasive’s litigation arguments and expert reports were submitted to the Patent Office, and all of NuVasive’s litigation and reexamination arguments were overcome.
- Vascular Solutions, Inc. v. Boston Scientific Corp. (D. Minn.): Represented patentee Vascular Solutions in patent infringement matter relating to coronary guide extension catheters. Obtained preliminary injunction for Vascular Solutions (reversed on other grounds). Also represented Vascular Solutions in inter partes review proceedings initiated by Boston Scientific. All matters settled with Boston Scientific paying continuing royalties to Vascular Solutions.
- Pure Fishing, Inc. v. Normark Corporation (D.S.C.): Represented defendant Normark in matter relating to manufacture of polymeric fishing lines. Won summary judgment of patent invalidity on three separate grounds (on-sale bar, derivation, and obviousness).
- In re USB Portable Storage Devices (ITC): Represented respondents Imation and IronKey in International Trade Commission proceeding relating to patents on USB flash drives. After months of hard-fought litigation, persuaded claimants to dismiss proceedings, without any payment or other concession, on the eve of trial.
- minSURG International, Inc. v. NuVasive, Inc., et al. (M.D. Fla.): Represented defendant Osteotech, Inc. Defeated preliminary injunction motion in patent infringement case relating to minimally invasive spinal implant procedures.
- Arctic Cat Inc. v. Polaris Indus., Inc., et al. (D. Minn.): Represented defendant Polaris in patent infringement case involving off-road vehicles. Developed invalidity defense and presented it to Arctic Cat; matter then settled for total payment of $16,500.
- DeKalb Genetics Corp. v. Novartis et International AG al. (N.D. Ill.): Represented defendant Novartis in patent infringement case relating to genetically altered seed corn. A week-long Markman hearing resulted in a favorable claim construction ruling on key noninfringement issues, and the case subsequently settled on favorable terms.
- Kimberly-Clark, Inc. v. The Procter & Gamble Company (private arbitration): Represented P&G in a private arbitration relating to patents on manufacturing disposable diapers.
- GenSci Regeneration Laboratories, Inc. v. Osteotech, Inc. (C.D. Cal.): Represented Osteotech in patent infringement case relating to bone grafting materials. GenSci was forced to withdraw its patent infringement allegations against Osteotech with prejudice prior to trial. Osteotech’s patent infringement allegations against GenSci were tried to a jury in a six week trial in Los Angeles. The jury rejected all of GenSci’s defenses of noninfringement, reverse doctrine of equivalents, enablement, written description, anticipation, and obviousness, and awarded Osteotech damages of $17.5 million. The verdict was listed as one of the 10 largest IP jury verdicts of 2001 by IP Worldwide, and also was the subject of an article in the January 21, 2002, edition of the National Law Journal.
News & Resources
Articles
February 2015
September 14, 2011
Volume 3 | No. 4
"Turning Patent Claims into Litigation English: An Update on Claim Construction Principles," The IP Book at 197
1st ed. 2003
News & Press Mentions
May 23, 2018
February 3, 2017
May 23, 2016
February 2, 2016
May 24, 2015
April 1, 2015
April 24. 2014
Select Presentations
- “Product Development IP Strategies,” Presented at University Enterprise Laboratories, April 2018
- “Playing Offense and Defense: A Playbook for Patent Issues During Your Product’s Development and Launch,” Presented at 2016 Midwest IP Institute, September 2016
- “Strategic Patent Analysis for New Product Launches,” CLE Presentation at Dorsey & Whitney, May 2016
- “Non-Practicing Entity (NPE) Litigation: Defense Strategies and Tools,” Continuing Legal Education presentation, January 2014
- “International Business in Life Sciences,” Panelist, LifeScience Alley, November 2013
- “Mainstreaming Exports,” Panelist, Minneapolis Regional Chamber of Commerce, November 2013
- “Design Patent and Trade Dress Lessons from the Smartphone Wars,” Presented at 2013 Midwest IP Institute, September 2013
- “A Year of Re-Invention: The Current State of Patent Reform,” Presented at Corporate Counsel Symposium, October 2012
- “The America Invents Act,” Presented at Minnesota State Bar Association, September 2011
- “The Scope of 35 U.S.C. § 271(e)(1)’s Exemption: When Is Infringement of a Medical Device Patent Not Infringement?,” Presented at Minnesota State Bar Association, May 2004
- “Preparing for Patent Litigation,” Presented at Schwegman, Lundberg, Woessner & Kluth, May 2004
- “Planning Is Everything: What To Do Before the Patent Lawsuit Is Served,” Presented at Corporate Counsel Symposium, November 2003
Industries & Practices
Patent Prosecution, Portfolio Strategy & Management
Explore This Practice View client achievements related to this practice View resources related to this practiceHealthcare & Life Sciences
Explore This Practice View client achievements related to this practice View resources related to this practiceBanking & Financial Institutions
Explore This Practice View client achievements related to this practice View resources related to this practiceEnergy & Natural Resources
Explore This Practice View client achievements related to this practice View resources related to this practiceFood, Beverage & Agribusiness
Explore This Practice View client achievements related to this practice View resources related to this practicePublic-Private Partnerships
Explore This Practice View client achievements related to this practice View resources related to this practiceIntellectual Property Litigation
Explore This Practice View client achievements related to this practice View resources related to this practice- Banking & Financial Institutions
- Commercial Litigation
- Creative Industries
- Energy & Natural Resources
- Food, Beverage & Agribusiness
- Healthcare & Life Sciences
- Intellectual Property
- Intellectual Property Litigation
- Israel
- Mining
- Patent Prosecution, Portfolio Strategy & Management
- Public-Private Partnerships
- Sustainability
- Technology
