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Mathias W. Samuel

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Office: Twin Cities
Phone: 612 337-2553
Email: samuel@fr.com



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Practice areas
Complex Litigation
Intellectual Property Litigation
Patent Litigation
Trademark Litigation
 
Technology areas
Electrical Engineering
Internet
Medical Devices
Telecommunications
 
Education
North Dakota State University B.S. Electrical Engineering 1991 Tau Beta Pi, Eta Kappa Nu
University of San Diego School of Law J.D. 1994 with honors, Order of the Coif

Professional experience
Mathias W. Samuel, a principal in the Minneapolis office of Fish & Richardson, is a trial lawyer whose practice emphasizes high technology litigation. He represents clients in a variety of technologies and industries, and has particular expertise in medical devices and telecommunications. Mr. Samuel has extensive experience leading trial teams on behalf of Fortune 500 companies in significant patent infringement cases across the United States. He has successfully tried patent cases on both coasts and in Minnesota.

Mr. Samuel also works closely with numerous Japanese clients and regularly travels to Japan. He has served as lead counsel for several Japanese companies in both district court and ITC litigations. In 2008, in a case involving endoscopic vein harvesting probes, he represented Terumo Corporation and Olympus in parallel litigation in the ITC and the United States District Court for the Northern District of California.

Mr. Samuel also litigates trademark and unfair competition cases. At the dawn of the e-commerce era, he was lead counsel for Amazon Bookstore in its trademark infringement case against Amazon.com. The case was widely followed in the local and national press because of the contentiousness of the case and because it raised novel legal issues relating to the intersection of "traditional" trademark rights with rights developed in cyberspace.

Mr. Samuel’s background, breadth of experience, and focus provide the foundation upon which he consistently obtains outstanding results for his clients. He has a bachelors of science in electrical engineering with additional coursework in bioengineering and is qualified to practice before the United States Patent and Trademark office. In addition to his litigation practice, he advises clients on patent portfolio development, due diligence, and other intellectual property matters.

Representative cases
Cobe Cardiovascular, Inc., and Sorin Group Deutschland GMBH v. Terumo Cardiovascular Systems Corporation - (heart-lung machines) Lead counsel for defendant Terumo Cardiovascular in a patent infringement case filed in Federal District Court for the District of Minnesota. Case settled favorably.

Rosen's v. Van Diest Supply, West Central, and Pro Tech - (particulate matter dispensers) Lead counsel for Rosen's in patent case in Federal District Court for the District of Minnesota. Case settled favorably.

Intergraph Hardware Technologies v. Texas Instruments - (parallel processing microprocessors) Counsel for Texas Instruments in multi-patent case in Federal District Court for the Eastern District of Texas. Case settled favorably.

Universal Surveillance v. Sensormatic Electronics - (electronic article surveillance tags) Lead counsel for patentee, Sensormatic, in patent case in Federal District Court for the Southern District of Florida. Jury verdict of infringement. Verdict affirmed on appeal.

Seikoh Giken v. Domaille Engineering - (optical fiber polishers) Lead counsel for Domaille Engineering in patent infringement case in Federal District Court for the District of Delaware. Case settled favorably.

Alcatel USA v. Cisco Systems - (digital cross-connects for telecommunications networks) Counsel for Alcatel USA in theft of trade secret case currently on appeal to the Federal Circuit.

Amazon Bookstore Cooperative v. Amazon.com - (trademark litigation involving "Amazon" trademark) Lead counsel in a trademark infringement case brought by Amazon Bookstore Cooperative, an independent Minneapolis bookstore, against Amazon.com in United States District Court for the District of Minnesota. The lawsuit was one of the first cases to involve a dispute over trademark rights between a traditional "brick and mortar" retailer and a pure e-commerce retailer. As such, it was widely followed both within the intellectual property world and the media as a whole. Case successfully settled (named the best settlement of 1999 by Minneapolis/St. Paul Citypages newspaper).

ITI v. Ademco Distribution, Inc. - (wireless security alarm systems) Counsel for Interactive Technologies, Inc., in a patent infringement case resulting in a jury verdict of thirty-six million dollars. (Largest patent verdict of 1998, according to the National Law Journal.)

Pacesetter, Inc. v. Cardiac Pacemakers, Inc. - (implantable pacemakers and defibrillators) Represented Pacesetter, Inc., a division of St. Jude Medical Products, in a patent infringement action resulting in a jury verdict of infringement and damages in the amount of 9.675 million dollars.

Aearo Company and Cabot Safety Intermediate Corporation v. Minnesota Mining and Manufacturing - (hearing protection devices) Defeated a preliminary injunction which included a two-day evidentiary hearing. Thereafter, defended 3M in a patent infringement case in which plaintiffs asserted two design patents and one utility patent against certain 3M hearing protection products. Obtained summary judgment of non-infringement on one patent and shortly thereafter successfully settled the case on the remaining two patents.

Rave Sports v. Overtons, Inc. and Aqua Sports Technology, Inc. - (trade dress litigation involving water trampolines) Successfully represented Rave Sports against Overtons in a Lanham Act unfair competition action. Successfully settled.

Little Six, Inc. d/b/a Mystic Lake Casino and Hotel v. Slavik and Eugene Viner - (domain name infringement; cybersquatting) Represented Mystic Lake Casino and Hotel in a domain name infringement case against multiple defendants. Successfully settled after obtaining preliminary injunction.

TeleMatrix, Inc. v. Millennium Products, Inc. - (trade dress infringement action involving hotel telephones) Successfully represented TeleMatrix, the second largest manufacturer of hotel telephones. Obtained an injunction as well as an agreement that all infringing products be sold outside the United States.

Telular v. Vox2 - (cellular telephone interface technology) Counsel for Vox2. Defeated motion for preliminary injunction with Court finding all four preliminary injunction factors favored Vox2. Case currently pending.

Mann Design v. Bounce, Inc. - (chewable pet toys) Counsel for Bounce, Inc. Successfully obtained transfer of case to Bounce, Inc.'s home venue. Case settled shortly thereafter. (Opinion published at 138 F. Supp. 1174.)

Etek v. Oplink - (fiber optic DWDM technology) Represented Oplink in defense of multiple patent infringement claims. Case successfully settled.

Chorum v. Oplink - (fiber optic DWDM technology) Represented Oplink in defense of multiple patent infringement claims. Case successfully settled.

Bar admissions
Admitted to the bar in Minnesota and numerous federal trial and appellate courts.
Registered to practice before the United States Patent and Trademark Office.

Additional information
Graduate of the National Institute for Trial Advocacy Intensive Trial Skills Program (2000 National Program held in Boulder, Colorado).