Jake M. Holdreith
Experience
- Practice focuses on intellectual property litigation with particular experience in patent and trade secret disputes.
- Litigation experience includes disputes in courts in the United States, Europe, Hong Kong, and other jurisdictions.
Selected Results*
Trial counsel in Medicis Pharmaceutical Corporation v. Upsher-Smith Laboratories, et al., No. CV05-3458 (D. Az. filed October 27, 2005), a case in which the Court denied a request to enjoin the client from making and selling its products, following a trial to the Court on the issues of infringement, validity and enforceability of the plaintiff's patent. A sealed memorandum decision was filed by the Court on April 25, 2006. The case was stayed on October 19, 2006 pending a re-examination of the plaintiff's patent.
Trial counsel in St. Clair Intellectual Property Consultants, Inc. v. Canon, Inc. et al., No. 03-241 (D. Del., filed February 28, 2003) a case in which a federal jury in Wilmington, Delaware awarded Mr. Holdreith's client, St. Clair, $34.7 million after a finding that Canon infringed four patents relating to digital camera technology. The verdict was announced on October 8, 2004.
Trial counsel in St. Clair Intellectual Property Consultants, Inc. v. Fuji, Ltd. et al., No. 03-241 (D. Del., filed February 28, 2003) a case in which a federal jury in Wilmington, Delaware awarded Mr. Holdreith's client, St. Clair, $3 million after a finding that Fuji infringed four patents relating to digital camera technology. The verdict was announced on October 25, 2004.
Trial counsel in St. Clair Intellectual Property Consultants, Inc. v. Sony Corp. et al., No. 01-557 (D. Del., filed Aug. 14, 2001) a case in which a federal jury in Wilmington, Delaware awarded his client, St. Clair, $25 million after a finding that Sony infringed four patents relating to digital camera technology. The verdict was announced on February 25, 2003. The parties entered into a license agreement two days later, the terms of which are confidential.
American Medical Systems Stress Urinary Incontinence Litigation: Lead counsel in complex patent litigation in several jurisdictions, including cross claims for infringement of seven patents on surgical methods and devices. Matter was settled on confidential terms involving cross-licenses.
Other cases include trial experience in complex, multi-million dollar patent litigation in multiple forums and before the Federal Circuit Court of Appeals. Technologies include, among others, medical devices, surgical methods, computer hardware and software, and pharmaceuticals.
Recognition
- "Super Lawyer," by Minnesota Law & Politics **
Languages
Memberships
- Chair of the Patent Committee, Federal District Court for the District of Minnesota
- American Bar Association
- American Intellectual Property Lawyers Association
- Federal Bar Association
- Minnesota Intellectual Property Lawyers Association
Bar Admissions
- Minnesota
- U.S. Court of Appeals, Eleventh Circuit
- U.S. Court of Appeals, Federal Circuit
- U.S. District Court, Colorado
- U.S. District Court, Minnesota
- U.S. District Court, Western District Wisconsin
Education
- University of Iowa College of Law, J.D., Order of Coif (1990)
- Macalester College, B.A., magna cum laude, Phi Beta Kappa (1987)
Books and Articles
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The Handbook of Environmentally Conscious Manufacturing
Richard D. Irwin, Inc. (1995) (co-authored)
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Selected Speeches
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E-Discovery: An Advanced Discussion of Today's Most Important 'Make or Break' Practical Issues (Course Chair and Moderator of Panel with Chief Magistrate Judge Paul W. Grimm, Magistrate Judge Janie S. Mayeron, and Magistrate Judge David J. Waxse)
Minnesota CLE, Minneapolis, Minnesota
(August 21, 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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Advanced E-Discovery
Minnesota CLE, Minnesota CLE Conference Center, Minneapolis, Minnesota
(August 20, 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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Year in Review: The Local Patent Rules
Minnesota Federal Bar Association (Panel discussion with members of the bench)
(February 1, 2007)
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The Patent Prosecutor's Guide to Patent Litigation
Midwest IP Institute, Minneapolis, Minnesota
(September 25, 2006)
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Hot Topics in IP Licensing 2006: Infringement Licensing from Both Sides
Minnesota CLE, MIPLA and the Licensing Executives Society – Minnesota Chapter
(June 9, 2006)
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Super CLE Week XXVI: IP Enforcement: A View from the Trenches of Patent Litigation
University of Minnesota Law School, Minneapolis, MN
(March 14, 2006)
Litigation by Licensing Companies: Who is Attacking the Patent System?
2005 Midwest Intellectual Property Institute (September 27-28, 2005 Litigation By Licensing Companies: Who is Attacking the Patent System?
Intellectual Asset Management, MN CLE Conference (May 12, 2005) Basic Patent Infringement Litigation
Patent Resources Group, The Registry Resort, Naples, Florida (May 1-3, 2003) When Patents and Trade Secrets Collide
CLE lecture - Intellectual Property (with Carrie Smith) (February 21, 2002) Litigating Under the Doctrine of Equivalents
American Intellectual Property Lawyers Association (Spring 1998)
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