Kenneth E. Levitt
PEOPLE

Kenneth E. Levitt

Partner
levitt.kenneth@dorsey.com

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

  • Primary Defense Counsel for Imation Corp. (2011-2015, Variety of Jurisdictions):  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. (2014, U.S. Patent Office): Represented patent owner Medtronic in ex parte 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 arguments presented by NuVasive in its reexamination petition and supporting expert declaration were overcome.
  • Vascular Solutions, Inc. v. Boston Scientific Corp. (2013, D. Minn.): Represented patentee Vascular Solutions in 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 (2012, 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 (2012, ITC): Represented respondents Imation and IronKey in International Trade Commission proceeding relating to 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. (2010, M.D. Fla.): Represented defendant Osteotech, Inc. Defeated preliminary injunction motion in matter relating to minimally invasive spinal implant procedures.
  • Arctic Cat Inc. v. Polaris Indus., Inc., et al. (D. Minn.):  Represented defendant Polaris in 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 v. Novartis et al. (genetically engineered seed corn):  Represented defendant Novartis.  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 (disposable diaper manufacturing):  Represented P&G in a private arbitration relating to technology for manufacturing disposable diapers.
  • GenSci v. Osteotech (bone grafting materials):  Represented Osteotech. GenSci was forced to withdraw its patent infringement allegations against Osteotech with prejudice prior to trial.  Osteotech’s patent infringement allegations 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

Select Presentations

  • “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
  • Banking
  • Clean Technology
  • Commercial Litigation
  • Energy
  • Food, Beverage & Agribusiness
  • Health Care
  • Intellectual Property Litigation
  • Israel
  • Mining & Natural Resources
  • Patent Prosecution, Portfolio Strategy & Management
  • Public-Private Partnerships

Professional & Civic

Community Involvement

  • Teaches Intellectual Property Class for LegalCORPS and the Hennepin County Library
  • University Enterprise Laboratories, Board Member
  • Twin Cities Cardozo Society, Program Committee Member

Accolades

  • Named finalist for Managing Intellectual Property’s 2015 Outstanding IP Litigator Award, Minnesota
  • Recognized as an “IP Star” by Managing Intellectual Property in 2013-2017
Kenneth E. Levitt