Jan M. Conlin
Experience
- Member of the firm's Executive Board.
- Trial counsel and special counsel for numerous corporations and individuals in patent and complex commercial disputes.
- Experienced in trials, arbitrations, and appellate work in a wide variety of areas.
Selected Results*
WNS Holdings LLC et al. v. Northwest Airlines Inc.: Defended Northwest Airlines, Inc. in a patent infringement suit relating to GPS and avionics technology. Specifically, Plaintiffs accused Northwest of infringing the patents through the alleged use of Automatic Dependant Surveillance, including ADS-B. After extensive discovery, a dismissal of the action was obtained, and the client secured the right to potentially recover its fees and costs in the event of any future litigation.
Great Clips, Inc. v. Hair Cuttery of Greater Boston, L.L.C. and Great Cuts, Inc.: Summary judgment granted to client, Great Clips, Inc., against defendant Great Cuts' claims for trademark infringement.
Trial counsel for defendant in $100 Million international arbitration proceeding against French multi-national seller of luxury goods arising from alleged breach of trademark license agreement; obtained a complete defense verdict and an award of fees from unanimous three member panel. (Party names withheld due to nature of proceeding).
Trial counsel in Eolas Technologies, Inc. and The Regents of the University of California v. Microsoft Corporation: Represented Eolas and the University of California, in patent infringement action involving web browser technology for the delivery of interactive applications embedded in web pages. The case was tried in United States District Court, Northern District of Illinois, Eastern Division before Judge Zagel. Jury verdict in favor of plaintiffs in the amount of $520.6 million; the court entered judgment for $565,894,868 which included prejudgment interest. The Federal Circuit affirmed the finding of infringement and the damages award, and ordered that Microsoft's invalidity and inequitable conduct defenses be retried. The case settled on a confidential basis four days before the start of the invalidity retrial.
Trial counsel in TriStrata Technology, Inc. v. Mary Kay Inc.: Represented TriStrata in a patent infringement case relating to alpha-hydroxy acid (AHA) anti-aging skin technology. The jury awarded $26,359,405 in damages plus interest. The U.S. Court for the District of Delaware, Judge Farnan, issued a final judgment March 31, 2006 granting prejudgment and post-judgment interest to TriStrata Technology, Inc. bringing the total award to over $43 million. The case was summarily affirmed by the Federal Circuit on January 10, 2007.
Trial counsel in Ricoh Corp. v. Pitney Bowes Inc.: Defended Pitney Bowes in a patent infringement involving communications and control within Pitney Bowes' mailing machines. The case was tried in the United States District Court for the District of New Jersey, Trenton Division, with Judge Brown presiding. The jury returned a verdict of invalidity in favor of Pitney Bowes finding anticipation of all 18 asserted claims. In addition, during trial, the Court entered summary judgment of anticipation of four additional claims. Jury decision was affirmed in a post-trial memorandum by the district court and summarily affirmed by the Federal Circuit.
Electromotive Division of General Motors Corporation v. Transportation Systems Division of General Electric Co., et al.: Defended General Electric in a patent infringement action involving planetary and compressor bearings used in diesel locomotive engines. Summary judgment ruling which found the patents invalid on the basis of on-sale bar was upheld by the Federal Circuit in Electromotive Div. of General Motors Corp. v. Transportation Systems Div. of General Elec. Co., 417 F.3d 1203, 75 U.S.P.Q.2d 1650 (Fed. Cir. 2005).
H&D Tire vs. Pitney Bowes: Defended Pitney Bowes in putative nationwide class action. Class certification was defeated in federal court. Case settled following remand to state court by the Fifth Circuit.
Medtronic v. Elan Pharmaceuticals: Represented Medtronic in commercial dispute involving sale of certain assets by Elan which were subject to an agreement with Medtronic. Case settled after initial discovery and mediation.
Pitney Bowes Inc. v. Hewlett-Packard Co.: Represented Pitney Bowes and obtained $400 million and certain intellectual property from Hewlett-Packard in settlement of a patent dispute over laser jet printers.
Hutto v. Estee Lauder Inc.: Defended Estee Lauder in a putative class action which was dismissed with prejudice prior to class certification.
Northwest Airlines v. NWA Credit Union: Represented Northwest Airlines in trademark dispute. Case settled just prior to scheduled trial in United States District Court, District of Minnesota.
Honeywell v. Minolta: Trial counsel for Honeywell in an action in which Honeywell obtained a $96.3 million verdict in a patent infringement suit involving autofocus technology. Royalties as a result of that litigation and related litigation approached $500 million.
Mirant Corp v. NRG Energy Inc.: Defended NRG Energy in dispute filed in Delaware Chancery Court involving hostile takeover bid by Mirant. Case was dismissed upon defendant's motion.
ADC Telecommunications Inc v. Commscope Solutions; Commscope Solutions v. Siemon Co.: Represented CommScope in actions filed in Minnesota and Connecticut involving patent disputes over jacks and plugs in computer technology. Cases resolved during discovery.
Pitney Bowes v. SHPS Human Resources Solutions, Inc.: Represented Pitney Bowes in commercial dispute involving benefits administration by SHPS. Case settled following TRO motion by Pitney Bowes.
Media
- New York Times
- Bloomberg
- American Lawyer
- IP Law 360
- Star Tribune
- Minnesota Lawyer
- Minnesota Law & Politics
- Twin Cities Business Monthly
- Los Angeles Times
- CNet News
- CFO Magazine
- Minneapolis/St Paul Business Journal
- The National Law Journal
- Bench & Bar
- Legal Times
Recognition
Named by Minnesota Lawyer as one of its "Attorneys of the Year" (2008)**
Named one of the "25 Women Industry Leaders," Minneapolis/St. Paul Business Journal (2007)**
Named a "500 Leading Lawyers in America Finalist," Lawdragon (2007)**
Named a "Super Lawyer" and one of the "Top 100 Women Super Lawyers" by Minnesota Law & Politics (2006, 2007, 2008, 2009)**
- Named to "The BTI Client Service All-Star Team" (2007, 2008, 2009) **
Named to “3000 Leading Plaintiffs’ Lawyers in America,” Lawdragon (2007)**
Listed in "The Best Lawyers in America" (2007, 2008, 2009, 2010 editions) **
Listed in “Minnesota’s Leading Attorneys,” Leading American Attorneys **
- Named "Top 40 Intellectual Property Super Lawyer," Minnesota Law & Politics **
Memberships
American Intellectual Property Law Association (AIPLA)
Minnesota Intellectual Property Law Association (MIPLA)
Minnesota State Bar Association (MSBA)
American Bar Association (ABA)
Civic Associations
- The Minneapolis Foundation, Board of Trustees (2009-present)
- Minnesota Orchestral Association, Board Member (2005-present)
Catholic Charities, Board Member (2006-present), Chair, Development Committee (2009)
University of St. Thomas Law School, Board of Governors (2007-present)
Minnesota State Bar Association, Civil Litigation Section Governing Council, (2001-present), Chair (2008-2009)
University of Minnesota Law School, Board of Visitors (2007-present), Chair (2009)
- Advocates for Human Rights, Women's Advisory Council
Bar Admissions
- Minnesota
- U.S. Court of Appeals, Eighth Circuit
- U.S. Court of Appeals, Federal Circuit
- U.S. Court of Appeals, Fifth Circuit
- U.S. Court of Appeals, First Circuit
- U.S. District Court, Eastern District of Michigan
- U.S. District Court, Eastern District of Wisconsin
- U.S. District Court, Minnesota
- U.S. Supreme Court
Education
- University of Minnesota Law School, J.D., cum laude (1988)
- University of St. Thomas, B.A., magna cum laude (1985)
Articles
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What CEOs Should Know About Licensing
Executive Counsel, Vol. 4 No. 6 (with Katie Crosby Lehmann and Sharon Roberg-Perez)
(November/December 2007)
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Willfulness Standard: Is There a Bright Line?
BNA's Patent, Trademark & Copyright Journal, Vol. 74, No. 1827
(July 20, 2007)
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Name Your Company Witness
The National Law Journal
(May 9, 2007)
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The Patent Files
Chief Executive (June 1998) (with Ronald Schutz)
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Trying the Complex Case in the United States
The Litigator, Eng. (1995) (with Michael Ciresi)
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Technology in the Courtroom
Trial (September 1992) (with Michael Ciresi)
Selected Speeches
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Challenging Gender Bias with Positive Role Models in Theater, Society, and Law (Panelists)
Guthrie Theater and West LegaEdcenter, Minneapolis, Minnesota
(March 3, 2009)
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What I Wish I'd Known Then That I Know Now: A Panel of Seasoned Litigators Tells All
MSBA Civil Litigation and New Lawyers Sections
(February 3, 2009)
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Experts Tackle Four Tough Patent Litigation Issues
Moderator - The 2008 Midwest Intellectual Property Institute, Minneapolis, MN
(September 25, 2008))
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First Chair Forum for Private Practitioners-Litigators and Advisors and First Chair Forum for In-House Counsel-Advisors and Litigation Managers
Panel Member - The 2008 Midwest Intellectual Property Institute, Minneapolis, MN
(September 25, 2008)
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Intellectual Property Issues in the Development and Use of Global Navigation Satellite Systems (GNSS) and Services
Panel Member - Institute of Navigation GNSS, Savannah, GA
(September 16-19, 2008)
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Patent Infringement Litigation
Patent Resources Group, Hyatt Regency Coconut Point, Bonita Springs, FL
(April 3-5, 2008)
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The Litigator's Perspective - Top 10 Tips for Patent Prosecution
Minnesota State Bar Association, Minneapolis, MN
(March 5, 2008)
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The 2007 Midwest Intellectual Property Institute Judges' Panel for Outside Counsel (Moderator)
Minneapolis, MN
(September 27, 2007)
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Patent Infringement Litigation
Patent Resources Group, Hyatt Regency Grand Cypress, Orlando, FL
(April 16-18, 2007)
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Patent Infringement Litigation
Patent Resources Group, Hyatt Regency Coconut Point, Bonita Springs, FL
(April 6-8, 2006)
The Year in IP Litigation
Faculty Member - The 2005 Midwest Intellectual Property Institute, Minneapolis, MN (September 27-28, 2005)
NITA North Central Regional Advocacy Program
Faculty Member - William Mitchell College of Law, St. Paul , MN (September 19-20, 2005)
Ten Considerations for Winning Patent Cases
78th Annual Meeting of the State Bar of California, San Diego, CA (September 8-11, 2005)
Time’s Up – Statutes of Limitations in Minnesota for Civil Litigators
2005 Minnesota State Bar Association Convention, Madden’s Resort in Brainerd, MN (June 17, 2005)
Patent Infringement Litigation
Faculty Member - Patent Resources Group (April 17-19, 2005)
Ten Considerations for Winning Patent Cases
29th Annual Intellectual Property Institute sponsored by The Intellectual Property Law Section of the State Bar of California, Anaheim, CA (November 5-6, 2004)
The Year in IP Litigation
Faculty Member - The 2004 Midwest Intellectual Property Institute, Minneapolis, MN (October 7-8, 2004)
Patent Infringement Litigation
Faculty Member - Patent Resources Group (May 1-3, 2003)
Intellectual Property 2003
Minnesota Institute for Legal Education, Minneapolis, MN (March 5, 2003)
Basic Patent Infringement Litigation
Faculty Member - Patent Resources Group (May 2-4, 2002)
Basic Patent Infringement Litigation
Faculty Member - Patent Resources Group, Naples, FL (April 13-15, 2000)
The Trial Lawyer’s Approach to Winning Patent Cases
Robins, Kaplan, Miller & Ciresi L.L.P., Delaware, MD (May 21, 1999)
Basic Patent Infringement Litigation
Faculty Member - Patent Resources Group, Miami, FL (April 25-27, 1999)
Settlement Strategies in International Patent Litigation
Faculty Member - Second Annual Conference on Intellectual Property in the Global Marketplace, Oregon Law Institute of Northwestern School of Law of Lewis & Clark College, Portland, OR (October 23, 1998)
The Trial Lawyer’s Approach to Winning Patent Cases
Robins, Kaplan, Miller & Ciresi L.L.P., Portland, OR (May 21, 1998)
The Trial Lawyer’s Approach to Winning Patent Cases
Robins, Kaplan, Miller & Ciresi L.L.P., New York, NY (January 15, 1998)
The Trial Lawyer’s Approach to Winning Patent Cases
Robins, Kaplan, Miller & Ciresi L.L.P., Los Angeles, CA (November 5, 1997)
The Trial Lawyer’s Approach to Winning Patent Cases
Robins, Kaplan, Miller & Ciresi L.L.P., Minneapolis, MN (November 7, 1996)
MTLA 14th Annual Convention: Commercial Law: Avoiding Current Litigation Pitfalls
Alexandria, MN (August 22-25, 1996)
Three Perspectives on Commercial Mediation: Plaintiff’s, Defendant’s and Mediator’s
Minnesota Trial Lawyers Association, Minneapolis, MN (April 16, 1996)
Annual Jazzfest Seminar: Liability, Causation and Damages
Association of Trial Lawyers of America, New Orleans, LA (April 29-May 1, 1993)
Mastering Business Jury Trials: Persuasion in Commercial Litigation Cases
Association of Trial Lawyers of America, Lake Buena Vista, FL (March 18-20, 1993)