IP Litigation Lawyer of the Year in Minnesota, US Merchant & Gould P.C. Daniel W McDonald Partner Tel: +1 612.336.4637 dmcdonald@merchantgould.com www.merchantgould.com/mcdonald
For over a century, Merchant & Gould has earned a reputation as having a premier team of expert trial lawyers. The firm’s preeminent litigation team has been representing companies, in the US and globally, leading the way into a world that thrives on technology and innovation. The firm’s trial lawyers prosecute and defend trademarks, patents and copyright lawsuits on behalf of clients in a broad range of industries. As lead counsel, they have litigated patents and trademarks from virtually every industry including software, biotechnology, semiconductors, and consumer products. The lawyers also have a vast depth of expertise as lead counsel with issues specific to Hatch-Waxman Act litigation in the pharmaceutical industry. Daniel W McDonald is a former chair of Merchant & Gould’s litigation practice group and currently serves on its Executive Committee. He has won jury trials, secured expedited relief, and succeeded in securing multi-million dollar awards for his clients. Mr McDonald is a seasoned litigator and trial lawyer with over 25 years of experience exclusively in intellectual property cases. He gets his clients involved in the decisionmaking process, explaining the risks and benefits of different strategies so they can make smart decisions that win cases. Mr McDonald represents clients in patent litigation, copyright litigation, trademark/trade dress litigation, and trade secret litigation with an emphasis on electronics, software, and Internet issues. He has represented clients ranging from individual inventors to the British Post Office, in
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Legal Awards 2013
cases involving a wide spectrum of technologies, from software, digital imaging, telecommunications, and electronics to apparel, aerospace, printing, and materials handling. Merchant & Gould’s typical clients are fast growing, medium sized businesses whose success has made them targets for competitors seeking to slow their growth through patent litigation, or copy their inventive technologies. They frequently communicate with Mr McDonald at a strategic level, but also have access to other members of the firm’s client teams when they need information. They are often positioning themselves for an exit strategy such as a sale of the business, and need to eliminate uncertainties created by litigation. Describing a recent case, he said: “First Premier Bank was sued in Texas by Phoenix Licensing and LPL for infringing multiple patents involving marketing financial products and services. Following a challenge to the patent through a re-examination request, the case settled favourably in February 2013.” According to Mr McDonald, a major issue in recent years is the growth of patent litigation filed by Non Practicing Entities (NPEs), some of which are less affectionately known as “patent trolls”. A priority for the firm and its clients in recent years is to develop strategies to win these cases at the lowest possible cost while also deterring future cases. He added: “We have had significant success with not only resolving these cases in a cost-effective matter, but implementing strategies such as attacks on the validity of the asserted patents through re-examinations or inter partes review proceedings at the US Patent Office.”