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Background

Stephen Schaefer is a Principal in the Twin Cities office of Fish & Richardson, and practices in the area of patents, serving large and small companies in the medical device and electronics industries. Mr. Schaefer devotes much of his time on contested patent matters in the U.S. Patent and Trademark Office, and on licensing and other contractual agreement matters. Mr. Schaefer also serves clients in the following core areas of patent practice: patent portfolio strategy and development; patent landscape and freedom to operate (right to practice) studies; intellectual property due diligence in connection with acquisitions and client investment decisions; patent infringement litigation strategy (with the benefit of having worked early in his career exclusively on patent litigation matters, including three major patent trials).

Mr. Schaefer is a frequent lecturer on patent and licensing topics all over the world. He has a specific expertise on a company’s patent strategy vis-à-vis competitors, involving patent enforcement actions in US and foreign courts and patent validity challenges in the US and foreign patent offices, and has lectured on strategy topics in that area on several occasions. He has also lectured on topics related to patent licensing matters, and has specific expertise related to clinical support agreements for the testing and development of medical devices.

Although Mr. Schaefer represents some large companies, he also enjoys working with start-up companies in the medical device area. Mr. Schaefer also serves on the Board of Directors for Noxilizer, Inc., a Baltimore, MD start-up medical device company developing a new low-temperature sterilization technology.

Mr. Schaefer joined Fish & Richardson P.C. in 1995, following a federal appellate clerkship for the Honorable Alvin A. Schall of the Court of Appeals for the Federal Circuit in Washington, D.C. (namely, the U.S. federal appellate court with exclusive jurisdiction over appeals in patent cases). Mr. Schaefer also worked for the intellectual property law firm of Pennie & Edmonds in New York, NY (1992-1993), and was a Lieutenant in the United States Air Force (1985-1989) before attending law school.

Significant Projects

Numerous appeals and oral arguments before the Board of Patent Appeals and Interferences in inter partes patent reexamination matters, including one Board oral argument attended by over 80 interested parties and observers.

Successfully defended three inter partes patent reexamination requests directed to spinal technology patents involved in a litigation proceeding, achieving a confirmation of patentability by the patent examiners on all claims of all three patents, in 2012.

Successfully defended two ex parte patent reexamination requests directed to an electronics client’s most critical and important patents, achieving a certificate of reexamination in both cases within nine months of the filing of the reexamination requests, in 2012.

Lead negotiator in connection with a large multi-national medical device company’s $11M acquisition of a start-up medical device company in the area of medical imaging, and managed all work on five agreements and licenses needed to close the transaction, in late 2010.

Lead outside intellectual property counsel to Boston Scientific Corporation in connection with its $27B acquisition of Guidant Corporation, in 2005-06.

Visiting attorney in Munich, Germany intellectual property law firm to obtain exposure to European and German Patent Office proceedings and infringement proceedings in the German court system, in Fall 2007.

Conducted over 30 intellectual property due diligence studies for venture fund clients in connection with investing decisions, from 1999 to present.

Member of trial team that represented plaintiff (and counter-defendant) in Power Integrations, Inc. v. Motorola, Inc. (high-voltage analog integrated circuits; jury verdict of $32.3 million and no liability for three counter-claimed patents; settled after jury verdict), in 1999.

Member of trial team that represented plaintiff in Pacesetter, Inc. v. Cardiac Pacemakers, Inc. (cardiac pacemakers and defibrillators; jury verdict of $9.75 million; settled after jury verdict), in 1998.

Member of trial team that represented plaintiff in Interactive Technologies, Inc. v. Pittway Corp. (wireless security systems; jury verdict of $36.0 million; vacated after appeal), in 1997.

Technical Areas of Expertise

Mr. Schaefer loves technology, and is fascinated with the inventive process and how things work. He also loves to learn new technologies, and takes pride in his ability to understand and capture the commercial significance of inventions. Here are some of the representative examples of technologies for which Mr. Schaefer has experience:

Medical Devices: Cardiac rhythm management (pacemakers, defibrillators and other implantable devices). Neuromodulation systems. Orthopedic devices for the spine and other joints (hips, knees, etc.). Cardiac and peripheral vascular catheters and stents. Drug infusion and insulin delivery systems. Glucose level sensing and monitoring, and drug infusion systems. Imaging systems. Image-guided surgery. Brain computer interface systems. Radiation therapy systems. Wound management. Continuous positive airway pressure (CPAP) systems and other technologies for patients with sleep apnea and other sleeping disorders. Computer and software systems to manage medical records and images. Surgical tools. Retractable needles and other disposables. Combination device and biologics systems, in collaboration with biotechnology colleagues.

Electrical Engineering and Electronics: Wireless communications systems, including mobile phone technologies (GSM, CDMA, etc.), wireless networking, global positioning system (GPS) based systems, radio and television transmission systems, wireless home and business security systems, and telemetry systems involving implantable medical devices. Analog integrated circuit design, including bipolar and MOS devices, transistors, amplifiers, current sources, and other building blocks. Semiconductor opto-electronics, including semiconductor lasers, and optical sources, detectors and optical amplifiers. Semiconductor fabrication and packaging, including semiconductor layer deposition methods, photolithography, etching, optoelectronics device packaging, and optical fiber couplings. Optical communications systems. Computer architecture and networking. Aviation electronics systems. Electrostatic discharge and electromagnetic interference protection circuitry. Oscilloscopes.

Software: Enterprise software systems to manage business operations, including software for customer relationship management (CRM), supply chain management, financial management, supplier bidding and auctioning systems, and analytics. Software systems and networks to manage medical records and images. Network traffic and resource management. Search technologies.

Education

M.S., University of Dayton 1995
Engineering Management


J.D., University of Minnesota Law School 1992
Board of Editors, Law Review
cum laude


B.S., University of Kentucky 1985
Electrical Engineering
with distinction, Tau Beta Pi, Eta Kappa Nu

Admissions

  • U.S. Patent and Trademark Office 1994
  • Minnesota 1995
  • U.S. Court of Appeals for the Federal Circuit 1994
  • U.S. District Court for the District of Minnesota 1995

Clerkships

United States Court of Appeals for the Federal Circuit, The Honorable Alvin A. Schall, 1993 - 1995

Memberships & Affiliations

​Minnesota Bar Association (MSBA).
Judicial Clerk to the Honorable Alvin A. Schall, United States Court of Appeals for the Federal Circuit, 1993-95. Active in various bar organizations, including the American Intellectual Property Law Association (AIPLA), serving on the Board of Directors for the Minnesota Intellectual Property Law Association (MIPLA), and on the Board of Governors for the Minnesota Bar Association. Co-founder in 1997 and board member for the Minneapolis NEXT charitable foundation, which provides scholarships for deserving youngsters in the Twin Cities. Currently Minneapolis NEXT has 40 students on scholarship in Twin Cities schools. Lieutenant in the United States Air Force, Wright-Patterson Air Force Base, Ohio, 1985-89, and worked in areas of aviation electronics ("avionics"), avionics data buses (optical and wired), modular avionics architectures, fiber optic systems, and the very high speed integrated circuits ("VHSIC") program.

Other Distinctions

​Interviewed in: "Crafting IP for Medical Devices​," Metropolitan Corporate Counsel, May 2016. Recognized by his peers as a Super Lawyer (2013). Author of: "Intellectual property due diligence: getting the most for your budget," MedTech Business Review, Autumn/Winter 2007; "The First Inventor Defense Act: A Product of ‘Eleventh Hour Amendment,’" MIPLA CLE Proceedings (Feb. 8, 2000); "Envirotech Corp. v. Westech Engineering, Inc.: The On-Sale Bar to Patentability and Executory Sales Offers," 75 Minn. L. Rev. 1505 (1992).

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