Overview
Carlson Caspers is an acclaimed intellectual property law firm known for excellence in intellectual property litigation and counseling, including patent infringement litigation, trade secrets, copyrights, trademarks, data privacy, ANDA, Hatch-Waxman, monetization, inter partes reviews (IPR), appeals, and more.
Founded in 2003 in Minneapolis, MN, our firm has built a reputation for remarkable client success in consumer, commercial, and industrial markets across a wide range of complex, technology-driven sectors such as manufacturing, medical devices, life sciences, pharmaceuticals, nutraceuticals, data privacy, and wireless communications.
Our firm has 33 licensed attorneys, all admitted to federal court in Minnesota, with 18 admitted to the United States Patent and Trademark Office. Many of our attorneys are also licensed in other federal and state national courts.
As a go-to intellectual property boutique with a deep bench of highly experienced lawyers from top technical and legal schools, our attorneys practice intellectual property litigation and counseling, with five attorneys also performing patent filing and strategic counseling services related to patent prosecution. We also have a robust IPR practice and routinely pursue parallel actions in district court and the USPTO in patent infringement cases.
Your business goals are the primary driver of any strategy, and understanding various business realities is foundational to our representation.
We appreciate that not all matters require the same approach and believe we are particularly adept at tailoring our strategies to align with our client's business interests. Some matters warrant a "no-stone-left-unturned" effort, while less mission-critical matters warrant a more streamlined approach.
For example, in a patent litigation defense, we would need to understand what your liabilities would be, what your projections are for the future of the allegedly infringing product or system, whether there is a basis for indemnification, and whether there is a possible non-infringing platform being examined for the future. We also would want to know more about the patents, understand the prior art, and other invalidity and non-infringement positions that may be available, etc. We are confident that our experience, expertise, and judgment will quickly and efficiently develop and execute strategies that will deliver successful resolutions. For example, for patent prosecution and as business owners, we would understand your budget and goals for every patent to be strategic and predictable in the outcome.
We believe that solid communications are crucial. We've found that keeping clients well-informed about the ongoing status of matters is key to optimal matter resolution and client satisfaction. Communications can take several forms, including weekly case update meetings in litigation matters and the opportunity to comment on proposed pleadings well before the filing date.
One of Carlson Caspers' core tenets is respect for the diversity of our clients, colleagues, and communities. Our commitment to inclusion is the foundation for a vibrant work environment and unparalleled client service from varied perspectives in developing strategies and solutions to serve our client's business goals. We recognize that diversity and inclusion require ongoing and active engagement within our firm and the broader community. Carlson Caspers is committed to ensuring that our lawyers are treated relatively in work experience, mentoring, and overall career advancement. We offer a 1LDiversity Scholarship Program, participate in the Twin Cities Diversity In Practice (TCDIP) 1L Clerkship Program (obtaining many of our most recent associates through that process), and sponsor and participate in organizations that promote diversity and inclusion within the legal profession. The firm also offers a 1L Diversity & Inclusion Scholarship program. We also strive to staff each litigation matter with attorneys representing diversity and inclusion.
The experienced lawyers at Carlson Caspers make up a diverse team of scientists, pharmacists, engineers, and technologists who focus on delivering value by respecting the client's genius and bringing in-depth industry knowledge, technical experience, subject matter expertise, and a global business perspective to every legal challenge. Clients include Fortune 500 companies as well as small companies and individuals.
For more information, visit carlsoncaspers.com.
Rankings
Regional
Minneapolis
Firm Leadership
Select Clients
Highlighted Client Comments
Rankings
Regional
Minneapolis
Practice Areas
- Appellate Practice
- Biotechnology and Life Sciences Practice
- Cannabis Law
- Commercial Litigation
- Copyright Law
- Intellectual Property Law
- Litigation
- Litigation - Intellectual Property
- Litigation - Patent
- Patent Law
- Technology Law
- Trade Secrets Law
- Trademark Law
Individuals Recognized in The Best Lawyers in America®
Client Comments
Awards
Minnesota Lawyer Diversity & Inclusion
In 2022, Minnesota Lawyer recognized Carlson Caspers and for the "Inventor Spotlight Series" on its website, https:\\www.carlsoncaspers.com.
Offices & Contacts
Significant Matters
EXMARK MFG. CO. (A SUBSIDIARY OF THE TORO COMPANY) V. BRIGGS & STRATTON POWER PRODUCTS GROUP
Carlson Caspers successfully prevailed in Nebraska federal court when a jury awarded its client, lawn-mower maker Exmark Manufacturing Company, Inc. (a subsidiary of The Toro Company), $14.38 million in damages after a six-day trial in December of 2018. Carlson Caspers also successfully prevailed in obtaining an affirmance of a prior determination that the infringement was willful, resulting in the Court awarding an additional $14.38 million in enhanced damages to Exmark. The judgment requires Wisconsin-based Briggs & Stratton Corporation to pay Exmark $28.76 million in damages (plus interest and costs to be determined) for patent infringement on a patent issued in 1999, which covers a lawn mower with flow control baffles. The Carlson Caspers team included Derek Vandenburgh, Joe Winkels, Alex Rinn, and Shelly Jonas. District of Nebraska (2018).
$75 MILLION WIN FOR WIRELESS OFDM PORTFOLIO
Phil Caspers, Sam Hamer, and Joe Winkels scored a $75 million win for ADC Telecommunications, Inc. Following the dot-com bubble, ADC divested its data transport business unit but retained the patent assets. Looking to monetize those assets, Mike Ouyang of ADC contacted Phil Caspers to assess the value of a 10-year-old, pending application related to the divested business unit. After some investigation, the team concluded that the application (filed in 1995) may be relevant to the developing 4G wireless standards that incorporate OFDM. Caspers and Hamer developed a long-term strategy for maximizing the value of the pending application, without litigation. That strategy included relentless due diligence into emerging wireless technology and standards and aggressive use of often overlooked Patent Office procedures (including more than 50 accelerated filings and reissue applications) to perfect a broad portfolio of patent rights covering multiple fundamental features of the emerging wireless standards. The team also developed and implemented a worldwide marketing plan to demonstrate to the industry the value of the portfolio and sell it. That long-term strategy paid off. In April of 2011, the team negotiated the sale of the patent portfolio for $75 million to HTC Corporation. The team’s work did not stop there. Following the transaction, Caspers and Hamer assisted HTC in understanding and developing an enforcement strategy for the portfolio, and in an ITC action against Apple, the team assisted HTC’s counsel representing key third-party witnesses and defending prosecution counsel in trial depositions, ultimately scoring a successful result against Apple.
CARLSON CASPERS NEGOTIATES MULTIPLE GLOBAL LICENSING AGREEMENTS FOR DUPONT PIONEER AND CRISPR-CAS9 TECHNOLOGY SECTION
Carlson Caspers assisted DuPont Pioneer in securing a non-exclusive license to the Broad Institute patent portfolio relating to CRISPR-Cas9 (Clustered Regularly Interspaced Short Palindromic Repeats) genome editing technology, as well as negotiating an agreement with Broad on a governance framework and standard licensing terms for the joint out-licensing of CRISPR-Cas9 technology to third parties in certain fields. Carlson Caspers has led multi-year licensing negotiations for its long-time client, DuPont Pioneer, concerning its in- and out-licensing of CRISPR-Cas9 gene-editing technology. Carlson Caspers also negotiated an arrangement with Caribou Biosciences that included a 1) cross-license of their respective CRISPR-Cas9 intellectual property portfolios, 2) the creation of a multi-year research collaboration to advance genome editing technology platforms, and 3) an equity investment by DuPont Pioneer in Caribou Biosciences. Carlson Caspers also led negotiations and completed a technology license agreement with ERS Genomics (“ERS”) that granted DuPont Pioneer exclusive rights to the ERS patent portfolio covering CRISPR-Cas9 genome editing technology in certain fields. According to DuPont Pioneer’s website, “This ground-breaking technology is expected to help scientists to develop innovative and sustainable solutions for growers similar to those realized through conventional plant breeding practices, but with even greater quality, accuracy and with more efficient development timelines.” DuPont Pioneer is applying CRISPR-Cas as an advanced plant breeding tool to develop seed products for greater environmental resiliency, productivity, and sustainability and has defined it as a set of CRISPR-Cas guiding principles. The Carlson Caspers intellectual property legal team included Brian Hayes, Samuel Lockner, Alexandra Olson, and Peter Kohlhepp.