J. ThomasVitt

Partner

(T) 1.612.217.8858

Tom Vitt has won multimillion dollar jury cases and favorably resolved many cases while serving as lead counsel in a variety of patent, trademark, trade secret, and unfair competition cases in trial and appellate courts around the United States. He has represented clients in a range of industries, including medical devices, banking, health care information technology, oil refining, sports equipment, and manufacturing.

Among the many cases he handled prior to joining Jones Day in 2017, Tom won a $4.5 million jury verdict for a plaintiff and defeated a $40 million counterclaim in a product disparagement and defamation case involving medical devices; won judgment, affirmed by the Federal Circuit, finding plaintiff's cardboard manufacturing patent invalid after a jury trial; won summary judgment invalidating plaintiff's patent on a process for manufacturing high-strength fishing line and also recovered attorneys' fees on the same plaintiff's claim of infringement of a polymeric fishing lure patent; and won summary judgment for the defendant in a trade dress lawsuit, securing defendant's right to continue selling its main dental implant product and again winning a substantial recovery of attorneys' fees.

Tom is a member of the Hennepin County Bar Association, Minnesota Bar Association, and the Federal Circuit Bar Association. He is active in the community and currently serves on the board of Catholic Charities of St. Paul and Minneapolis and the finance committee of St. Thomas the Apostle Church.

Experience

  • U.S. Bank wins appeal, invalidates patent relating to check processing methodsJones Day successfully represented U.S. Bancorp and Elavon, Inc. on an appeal from a judgment that they had infringed Solutran, Inc.'s patent relating to check processing methods.
  • Vascular Solutions enforces catheter patents against QXMédicalJones Day represents Vascular Solutions, LLC, Teleflex Innovations Sarl, and Arrow International, Inc in ongoing patent litigation.
  • Patterson Dental Supply faces contract dispute over its dental practice management softwareJones Day is defending Patterson Dental Supply, Inc. against allegations by Demandforce, Inc. and Sesame Communications, Inc. that Patterson committed tortious interference and trade libel when Patterson informed its customers that it had terminated contracts with Sesame and Demandforce that had allowed those companies to interface with Patterson's dental practice management software.
  • Nalco litigates patent and antitrust claims against competitorJones Day served as lead counsel to Ecolab Inc. subsidiary, Nalco Company, LLC, which alleged that a competitor committed fraud on the Patent Office in obtaining a patent on a method for removing contaminants from high-calcium crude oil and that the competitor used that patent to force Nalco from the market.
  • The following represents experience acquired prior to joining Jones Day.

    Patent Litigation

    Pure Fishing, Inc. v. Normark Corporation (D.S.C. and Fed. Cir.). Won summary judgment, affirmed on appeal, invalidating claims of patent covering manufacturing process for fishing line. Also won dismissal of claim alleging infringement of fishing lure patent and full recovery of attorneys' fees.

    George Martin Co. v. Alliance Machine, Inc. (N.D. Cal. and Fed. Cir.). Won judgment invalidating plaintiff's cardboard manufacturing patent after jury trial; affirmed on appeal.

    Emergis v. Otter Tail (D. Minn. and Fed. Cir.). Won summary judgment, affirmed on appeal, finding no infringement of plaintiff's patent concerning Internet payment system.

    Vascular Solutions, Inc. v. Boston Scientific Corporation (D. Minn. and Fed. Cir.). Represented Vascular Solutions asserting patent infringement claims relating to guide extension catheters. Case settled favorably.

    Terumo v. Vascular Solutions, Inc. (D.N.J.). Represented Vascular Solutions defending patent infringement claims relating to a radial hemostat. Case settled favorably.

    Solutran v. U.S. Bank and Elavon, Inc. (D. Minn.). Represented U.S. Bank and Elavon defending patent infringement claims involving electronic check processing.

    Cave Consulting Group, Inc. v. OptumInsight, Inc. (N.D. Cal. and Fed. Cir.). Represented OptumInsight in a case involving physician efficiency measurement patents.

    Knopik v. Mobil Oil (D. Minn. and Fed. Cir.). Won summary judgment, affirmed by Federal Circuit, that Mobil did not infringe two patents relating to soil vapor extraction technology.

    Cybersettle v. National Arbitration Forum (D.N.J. and Fed. Cir.). After taking over case on appeal, obtained reversal from Federal Circuit of trial court's finding of patent infringement on patent concerning computerized dispute resolution procedure.

    minSURG Int'l, Inc. v. Osteotech, Inc., et al. (M.D. Fla.). Represented medical device company defending claims of inducement and contributory infringement of medical method patent directed to bone grafting technique; defeated preliminary injunction motion.

    Wildlife Resources v. HME (D. Minn.). Won summary judgment for plaintiff of patent infringement for patent on hunting aid.

    Keystone Retaining Wall Systems, Inc. v. Rockwood Retaining Walls, Inc. (D. Minn.). Represented Keystone asserting infringement of design patents on retaining walls. Achieved favorable settlement after winning Markman and summary judgment motions.

    Diomed v. Vascular Solutions, Inc., et al. (D. Mass. and Fed. Cir.). Represented Vascular Solutions defending claims of infringement of patent claiming method of laser vein treatment. Case settled while on post-trial appeal.

    AngioDynamics v. Vascular Solutions, Inc. (D. Del.). Represented Vascular Solutions in case concerning allegations of infringement of patent claiming method of using a laser fiber with a spacer to treat varicose veins. Case settled after positive interim ruling in reexamination proceedings.

    VNUS Medical Technologies v. Vascular Solutions, Inc., et al. (N.D. Cal.). Represented Vascular Solutions defending claims of infringement of patent concerning method of varicose vein treatment. Case settled after Markman and summary judgment motions.

    Osteotech, Inc. v. RTI (D.N.J.). Represented Osteotech asserting infringement of patent claims concerning method of preparing bone for transplantation. Case settled before Markman ruling.

    SL Technology, Inc. v. Smarte Carte Corp. (D.N.J.). Defended Smarte Carte against claims of infringing patent for biometric technology used for locker payment system. Case settled favorably before Markman hearing.

    Straumann v. Lifecore Biomedical, Inc. (D. Mass.). Defended patent infringement claims concerning dental implant products. Case settled after Lifecore implemented redesigned product.

    Ohio Medical Instrument Co., Inc. v. Image Guided Neurologics, Inc. (D. Minn.). Represented Image Guided Neurologics defending patent infringement allegations concerning medical device used in neurosurgery.

    Trademark, False Advertising, and Unfair Competition

    Vascular Solutions, Inc. v. Marine Polymer (D. Mass. and First Cir.). Represented Vascular Solutions, won $4.5 million dollar jury verdict and defeated $40 million dollar counterclaim in false advertising, product disparagement, and defamation case involving bandages infused with bovine thrombin to stop bleeding after catheterization procedures.

    Diomed v. Vascular Solutions (D. Mass.). Won summary judgment for Vascular Solutions defeating trademark, unfair competition, and false advertising claims in case involving endovenous laser therapy products.

    Straumann v. Lifecore Biomedical, Inc. (D. Mass.). Won summary judgment for Lifecore in trade dress infringement case, protecting Lifecore's right to sell its main dental implant product, and obtained substantial recovery of attorneys' fees.

    Aviva Sports, Inc. v. Fingerhut Direct Marketing, et al. (D. Minn. and Fed. Cir.). Took over case on appeal and won affirmance of award of $1 million in attorneys' fees and $8.3 million default judgment award as sanction for litigation misconduct in patent and false advertising case.

    Normark Corporation v. Pure Fishing, Inc. (D. Minn.). Represented Normark asserting trade dress infringement of famous Rapala fillet knife by Pure Fishing; obtained favorable settlement.

    Southeast Clinical Nutrition Centers, Inc. v. Mayo Foundation (M.D. Ga.). Represented Mayo and won dismissal of plaintiff's claims asserting that Mayo's popular diet book and associated materials infringed plaintiff's trademarks.

    First Bank of West Des Moines v. First Bank, N.A. (D. Iowa). Won bench trial allowing First Bank, N.A. to change newly acquired branch office names to "First Bank" in Iowa despite plaintiff's use of the name "First Bank," based on First Bank, N.A.'s prior use of the mark in Iowa, the plaintiff's unclean hands, and the lack of a likelihood of confusion due to the nature of banking services.

    Represented Manhattan Toy in many cases asserting trademark, trade dress, copyright, and design patent claims to protect Manhattan Toy's products from competitor copying.

    Speaking Engagements

    • November 8, 2018
      Protecting Artificial Intelligence IP: Patents, Trade Secrets, or Copyrights? (University of Minnesota Law School)
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