Careers

At M&G, we dedicate ourselves to finding the best solutions to our clients’ challenges, no matter where it takes us.

Case Studies

Industries

Offices

About Merchant & Gould

Pages

People

News Room

Practices

Staff

Home - Merchant & Gould P.C.

With more than 15 years' experience as a trial attorney, Tom has tried numerous cases to verdict before both judges and juries, as well as successfully resolved numerous matters in contested arbitration hearings. Tom's skill at synthesizing complex ideas into understandable, interesting material for judges, juries, and others not trained in a particular area of science has helped his clients gain significant leverage in cases.

contentpilot/introduction

Tom's practice is concentrated on drug disputes arising under the provisions of the Hatch-Waxman act. He also has extensive experience in mechanical litigation, representing both patent owners and accused infringers in patent disputes involving such matters as high-tech air filters, pharmaceutical compositions, computer chip manufacturing, commercial irrigation systems, sophisticated golf and turf care equipment, optical lenses for 3D imaging, and industrial insulation.

core/paragraph

Tom has handled many other types of complex intellectual property matters such as trademark infringement, copyright infringement, misappropriation of trade secrets, false advertising, and unfair competition. In addition, he routinely advises clients on intellectual property-related licensing and strategy issues.

Outside of the office, Tom is a fitness enthusiast. In addition to daily exercise, he enjoys downhill skiing and biking.

University of Minnesota Law School, J.D., 1992, 

University of Wisconsin - River Falls, B.S. Economics, 1989, 

Tom Johnson, Intellectual Property Attorney

Pharmaceuticals

Shooting Sports

Sports & Fitness

Minneapolis

Merchant &amp; Gould’s Pro Bono Committee announced the firm’s 2022 Pro Bono Awards to attorneys who have dedicated their time to helping their communities through pro bono legal services and their deep commitment.



A special congratulations goes to Bill Hughet (D.C.) who performed a total of 97 pro bono hours in 2022, spread out over multiple clients.&nbsp;He is the recipient of Merchant &amp; Gould’s 2022 Pro Bono Award.



In addition, Merchant &amp; Gould recognizes a few other people who went above and beyond in pro bono this year. Tom Johnson (Minneapolis) and Michael Erbele (Minneapolis) both recorded over 80 pro bono hours in 2022; and several other professionals recorded more than 40 pro bono hours, including Joe Gess (D.C.), Samuel Scholz (Minneapolis), Peter Gergely (New York), Rob Lyksett (Minneapolis), and Rachel Scobie (Minneapolis). In total, M&amp;G professionals recorded more than 1,100 pro bono hours last year, making an immense impact in several states around the country.



Congratulations to Bill and all the attorneys who continue to make our communities even better by providing pro bono legal services!

Merchant & Gould Congratulates Bill Hughet as the Firm’s 2022 Pro Bono Award Winner

Last week, the United States Supreme Court granted certiorari in Jack Daniel’s Properties, Inc. v. VIP Products LLC, No. 21-16969 (Nov. 21, 2022). The Court will consider the recurring split on the question under the Lanham Act: Under what circumstances does humorous use of another’s trademark as one’s own mark on a commercial product constitute trademark infringement or dilution?



The legal battle started in 2014 when Jack Daniel’s sued in the U.S. District Court for the District of Arizona to enjoin VIP Products from selling dog toys that parodied Jack Daniel’s trademarked Old No. 7 Black Label Tennessee Whiskey bottle. VIP does not sell whiskey or use the JACK DANIEL’S word mark. Rather, VIP’s toy replaces the design of the Jack Daniel’s bottle with humorous dog-themed text alterations, like replacing “Jack Daniel’s” with “Bad Spaniels”; “Old No. 7 Tennessee Sour Mash” with “the Old No. 2 on your Tennessee Carpet” and the alcohol content descriptions with “43% Poo By Vol.” and “100% Smelly.”



The Arizona district court initially found that VIP’s use of Jack Daniel’s trademarks to sell poop-themed dog toys was likely to confuse consumers, infringed Jack Daniel’s marks, and tarnished Jack Daniel’s reputation. A unanimous panel of the Ninth Circuit, however, reversed and remanded, holding that VIP’s toy was a creative work with a “humorous message” that was entitled to First Amendment protections. On remand, the district court found in favor of VIP. The Ninth Circuit then affirmed.



Jack Daniel’s petitioned for certiorari, identifying two issues for review: (1) Whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, 15 U.S.C. § 1125(a)(1), or instead receives heightened First Amendment protection from trademark-infringement claims; and (2) whether humorous use of another’s mark as one’s own on a commercial product is “noncommercial” and thus bars as a matter of law a claim of dilution by tarnishment under the Trademark Dilution Revision Act, 15 U.S.C. § 1125(c)(3)(C). The Supreme Court granted cert on both issues.

SCOTUS Grants Certiorari to Weigh in on First Amendment Protection to Trademark Parody

Last week, the U.S. Court of Appeals for the Federal Circuit issued a decision in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-144.ORDER.9-18-2020_1655080.pdf">In re Google LLC</a>, No. 2020-144 (Sept. 18, 2020), denying Google’s petition for a writ of mandamus.



Personalized Media Communications LLC (“PMC”) sued Google in the Eastern District of Texas (“EDTX”) for infringing PMC’s patents related to video streaming. PMC claimed venue in the EDTX was supported by the presence of several Google internet servers located within the district. Google moved to dismiss for improper venue under 28 U.S.C. § 1400(b) contending it does not reside in the EDTX and has no “regular and established place of business” in that district. While Google’s motion in the case at hand was pending, the Federal Circuit, in an unrelated case, dismissed venue arguments identical to those raised by PMC. Specifically, the Federal Circuit held that a “‘regular and established place of business’ requires the regular, physical presence of an employee or other agent of the defendant conducting the defendant’s business at the alleged ‘place of business.’” In re Google LLC, 949 F.3d 1338, 1345 (Fed. Cir. 2020). In the case at hand, PMC then submitted a supplemental brief to the district court raising a new venue theory. PMC asserted that Google’s relationship with a company located in the EDTX that warehoused, refurbished, and repaired Google products, such as Google cellphones, supported venue there. The district court denied Google’s motion to transfer.



Google petitioned the Federal Circuit for a writ of mandamus requiring the district court to vacate its decision and to dismiss or transfer the case out of the EDTX. The Court explained that “[a] party seeking a writ bears the heavy burden of demonstrating to the court that it has no ‘adequate alternative’ means to obtain the desired relief . . . and that the right to issuance of the writ is clear and indisputable.” While the Court voiced sympathy for Google, noting the district court had not moved quickly on Google’s motion, and acknowledged the viability of Google’s arguments against venue, the Court nevertheless concluded Google had not satisfied the heavy burden a party faces when seeking a writ of mandamus. Rather, the Court held, Google’s right to a writ was not “clear and undisputed” and Google can obtain meaningful review of the district court’s venue ruling after the final judgment is entered in the district court case.

CAFC Reiterates High Bar for Writ of Mandamus

Last week, the U.S. Court of Appeals for the Federal Circuit issued a decision in <a href="https://cafc.uscourts.gov/opinions-orders/21-1732.OPINION.4-29-2022_1943629.pdf">Auris Health, Inc. v. Intuitive Surgical Operations, Inc., No. 2021-1732 (April 29, 2022)</a>, vacating and remanding a Patent Trial and Appeal Board decision on patentability.



Auris had sought inter partes review of all claims of U.S. Patent No. 8,142,447 (“the ’447 patent”), which relates to robotic surgery systems that allow surgeons to remotely manipulate surgical tools using a controller. In particular, the ’447 patent addresses difficulties surgeons face in switching between different surgical instruments by using a servo-pulley mechanism. In the IPR, Auris asserted that all claims of the ’447 patent were obvious in view of two prior art patents. In its final written decision, the Board determined that the asserted prior art references disclosed each limitation of the challenged claims, but that a skilled artisan would not have been motivated to combine those references because “surgeons were skeptical about performing robotic surgery in the first place.” Accordingly, the Board held that Auris had not demonstrated the unpatentability of the challenged claims. Auris appealed.



On review, the Federal Circuit held that “generic industry skepticism cannot, standing alone, preclude a finding of motivation to combine.” The Court explained that the motivation-to-combine inquiry asks whether a skilled artisan “not only could have made but would have been motivated to make the combinations . . . of prior art to arrive at the claimed invention.” As to the “would have” question, the Court explained, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” The Court noted that evidence of industry skepticism may play a role in an obviousness inquiry, but as a secondary consideration, and that even then “the evidence of skepticism must be specific to the invention, not generic to the field.” The Court vacated the Board’s decision and remanded for further consideration of the parties’ motivation-to-combine evidence under the proper legal standard.



Judge Reyna dissented. While he agreed that “skilled artisans’ general skepticism toward robotic surgery, by itself, could be insufficient to negate a motivation to combine,” he disagreed “that it could never support a finding of no motivation to combine.” Moreover, he believed the Board’s decision on lack of motivation to combine was supported by more than just evidence general skepticism.

CAFC Holds Generic Industry Skepticism Alone Insufficient to Preclude Motivation to Combine

Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in SynQor Inc. v. Vicor Corp., No. 2019-1704 (February 22, 2021), holding collateral estoppel (a/k/a issue preclusion) applies to decisions of the Patent Trial and Appeal Board in inter partes reexamination proceedings. Judge Hughes, writing for the majority, held reexamination offers “adequate adversarial participation” for both sides — provided the procedures used in the prior proceeding were not “fundamentally poor, cursory, or unfair” and the issues remain mostly the same as between the earlier and later proceedings.



SynQor asserted U.S. Patent Nos. 7,072,190 (“the ’190 patent”), 7,564,702 (“the ’702 patent”), and 8,023,290 (“the ’290 patent”) against Vicor. In response, Vicor petitioned for reexamination of all three patents, which are part of a family of patents directed to DC-DC power converters used in large computer systems. Vicor argued the claims were unpatentable over two references—Steigerwald and Cobos. SynQor argued a skilled artisan would not have combined those references due to incompatibilities in frequency.



&nbsp;During reexamination of the ’702 patent and the ’290 patent, the Board held the challenged claims were not unpatentable, in part because incompatibilities in frequency as between Cobos and Steigerwald prevented their combination. SynQor earlier appealed those decisions, and the Federal Circuit affirmed.



In the reexamination of the ’190 patent, however, the Board reached the opposite result. The Board concluded the challenged claims of the ’190 patent were unpatentable in view of the combination of Steigerwald and Cobos. The Board explained “the evidence points strongly to the lack of a frequency range discrepancy between Cobos and Steigerwald.” SynQor appealed.



On review, the Federal Circuit, relying on B&amp;B Hardware, held collateral estoppel applies “[w]hen an administrative agency is acting in a judicial capacity and resolves disputed issues of fact properly before it which the parties have had an adequate opportunity to litigate.” Noting it had previously held, in Papst Licensing, that collateral estoppel applies to inter partes reviews, the Court determined it applies to inter partes reexamination as well. The Court explained the “statutory scheme governing inter partes reexaminations is fully consonant with common law estoppel.” The Court further held the facts of the case before it supported application of issue preclusion, and vacated the Board’s judgment of unpatentability.



Judge Dyk dissented.

CAFC Holds Collateral Estoppel Applies to Inter Partes Reexam Proceedings

Last week, the Federal Circuit issued a precedential decision in <a href="https://cafc.uscourts.gov/opinions-orders/22-2217.OPINION.7-24-2023_2161663.pdf">United Therapeutics Corp. v. Liquidia Technologies, Inc., No. 22-2217 (July 24, 2023)</a>. The Court affirmed the district court’s holding that the pulmonary hypertension (“PH”) patents at issue were not invalid for lack of enablement.



United Therapeutics sued Liquidia for infringing U.S. Patent 10,716,793 (the ’793 patent) and U.S. Patent 9,593,066 (the ’066 patent). The ’793 patent claims a method of administering the drug treprostinil via an inhaled solution. The ’066 patent claims a pharmaceutical composition of treprostinil. The district court found the method patent was valid and infringed by Liquidia but the composition patent was invalid as anticipated. Consequently, the New Drug Application for Liquidia’s treprostinil drug, Yutrepia, was denied until expiration of the ’793 patent. Both parties appealed.



The Federal Circuit affirmed the district court’s decision on all grounds. With respect to the ’066 composition patent, the Court affirmed the district court’s holding that certain claims are invalid and thus, not infringed.



With respect to the ’793 method patent, the Court likewise affirmed the district court’s holding that Liquidia would induce infringement by marketing Yutrepia and that Liquidia failed to prove any claim of the ’793 patent invalid as not enabled. &nbsp;The Court noted that the claim term “treating pulmonary hypertension” includes treating five subset groups of PH patients. Liquidia argued the specification of the ’793 patent provides no guidance on how to treat a specific subset of patients (Group 2 PH), and thus was not enabled for Group 2 PH patients. The Court disagreed, stating:



… It would be incorrect to fractionate a disease or condition that a method of treatment claim is directed to, and to require a separate disclosure in the specification for each individual variant of the condition (here, an individual group of pulmonary hypertension patients) in order to satisfy the enablement and written description provisions of 35 U.S.C. § 112, unless these variants are specified in the claims.



The Court explained that a subset of patients is not analogous to an unsupported species in a generic claim to chemical compounds.



The Court also rejected Liquidia’s argument that the claim term “treating pulmonary hypertension” requires a showing of safety and efficacy, noting that absent claim limitations incorporating safety and efficacy requirements “[q]uestions of safety and efficacy in patent law have long fallen under the purview of the FDA.”

CAFC Holds Separate Disclosure of Drug Variants Not Required Under Section 112

Recently, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Maxell, Ltd. v. Amperex Technology Ltd., No. 2023-1194 (March 6, 2024), reversing a claim construction ruling by Judge Albright of the Western District of Texas. Maxell owns U.S. Patent No. 9,077,035 (the ’035 patent), directed to rechargeable lithium-ion batteries. Maxell filed an infringement lawsuit against Amperex, a Chinese manufacturer of lithium-ion batteries. In response, Amperex asserted that claim 1 of the ’035 patent was invalid as indefinite.



The claim at issue requires at least two lithium-containing transition metal oxides, represented by formulas including a transition metal element M1. The relevant claim limitations read:



<ol type="1">
<li>“M1&nbsp;represents at least one transition metal element selected from Co, Ni and Mn.”</li>
</ol>



<ol type="1" start="2">
<li>“Wherein the content of Co in the transition metal M1&nbsp;of the formulae (1) and (2) is from 30% by mole to 100% by mole.”</li>
</ol>



Following claim construction, Judge Albright’s Markman order found claim 1 to be indefinite because “the plain language of [claim 1] recites a contradiction.” That is: “[t]he first part of the claim recites a Markush group where [cobalt] is not necessarily required to be in the claimed compound while the second part of the claim recites that [cobalt] is necessarily required. For an element to simultaneously be optional and required is a contradiction on its face.” Judge Albright entered partial final judgment on claim 1 in favor of Amperex. Maxell appealed.



The Federal Circuit reversed and remanded. The Court found that claim 1 was not indefinite because the limitations in question were consistent. The Court held “[i]f there are two requirements, and it is possible to meet both, there is no contradiction.” The Court determined that limitation 2 narrowed limitation 1 rather than contradicting it. The first limitation states one requirement, i.e., a transition metal containing cobalt, nickel, or manganese. The second limitation states that the transition metal element must contain 30% to 100% cobalt by mole. Thus, it was completely possible for a transition metal element to meet both requirements.



The Court further noted that narrowing does not imply contradiction when it is done through dependent claims. Relying on Amperex’s concession at oral argument, the Court determined that there would be no contradiction if limitation 2 was written as a dependent claim. Accordingly, the Court reversed Judge Albright’s indefiniteness finding and remanded.

Federal Circuit Reverses Texas District Court’s Indefiniteness Finding

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in&nbsp;The Best Lawyers in America©&nbsp;2025.



Best Lawyers compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a Best Lawyers listing is considered an unbiased honor.



Atlanta, GA



<ul>
<li>Jeffrey D. Blake 
<ul>
<li>Patent Law</li>
</ul>
</li>
</ul>



Minneapolis, MN



<ul>
<li>John A. Clifford 
<ul>
<li>Advertising Law</li>



<li>Litigation &#8211; Intellectual Property</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Andrew S. Ehard 
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Thomas R. Johnson 
<ul>
<li>Advertising Law</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>Scott W. Johnston 
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Heather J. Kliebenstein 
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Thomas J. Leach 
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Brent E. Routman 
<ul>
<li>Advertising Law</li>
</ul>
</li>



<li>Christopher J. Schulte 
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>William D. Schultz 
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Christopher J. Sorenson 
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>Anthony R. Zeuli 
<ul>
<li>Copyright Law</li>



<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Rachel Zimmerman Scobie 
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>



New York, NY



<ul>
<li>Peter A. Gergely 
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>
</ul>



Alexandria, VA



<ul>
<li>John S. Kern 
<ul>
<li>Litigation &#8211; Patent</li>



<li>Patent Law</li>
</ul>
</li>



<li>Daniel J. Pereira 
<ul>
<li>Biotechnology and Life Sciences Practice</li>



<li>Patent Law</li>
</ul>
</li>



<li>Eric W. Schweibenz 
<ul>
<li>Patent Law</li>
</ul>
</li>
</ul>

Merchant & Gould Attorneys Recognized by Best Lawyers® in 2025 in America.

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in&nbsp;The Best Lawyers in America©&nbsp;2024.



Best Lawyers&nbsp;compiles lists of outstanding attorneys by conducting peer-reviewed surveys in which lawyers confidentially evaluate their colleagues. Since lawyers are not permitted to purchase their rankings or pay a fee to participate, a&nbsp;Best Lawyers&nbsp;listing is considered an unbiased honor.



Atlanta, GA



<ul>
<li>Jeffery D. Blake
<ul>
<li>Patent Law</li>
</ul>
</li>
</ul>



Minneapolis, MN



<ul>
<li>John A. Clifford
<ul>
<li>Litigation- Intellectual Property</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Andrew S. Ehard
<ul>
<li>Litigation- Intellectual Property</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Scott W. Johnston






<ul>
<li>Litigation- Intellectual Property, </li>
</ul>



<ul>
<li>Trademark Law</li>
</ul>
</li>



<li>Thomas R. Johnson
<ul>
<li>Advertising Law</li>
</ul>
</li>



<li>Heather J Kliebenstein
<ul>
<li>Litigation- Intellectual Property </li>
</ul>
</li>



<li>Thomas J. Leach
<ul>
<li>Litigation- Intellectual Property</li>
</ul>
</li>



<li>Brent E. Routman
<ul>
<li>Advertising Law</li>
</ul>
</li>



<li>Christopher J. Schulte
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>William D. Schultz
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Christopher J. Sorenson
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>



<li>Anthony R. Zeuli
<ul>
<li>Copyright Law</li>



<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>



<li>Patent Law</li>



<li>Trademark Law</li>
</ul>
</li>



<li>Rachel Zimmerman Scobie
<ul>
<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>



New York, NY



<ul>
<li>Peter A. Gergely
<ul>
<li>Litigation &#8211; Intellectual Property</li>



<li>Litigation &#8211; Patent</li>
</ul>
</li>
</ul>

Merchant & Gould Attorneys Recognized by Best Lawyers® in 2024 in America.

Chemical & Life Sciences

Mechanical

Litigation

Trade Secret

Copyright

Anne-Marie Larkin

Partner

Thomas R. Johnson

American Bar Association 
Hennepin County Bar Association 
Minnesota Intellectual Property Law Association

Professional Affiliations

Court’s Inducement Theory in Grokster Creates Uncertainty, Intellectual Property Today, August 2005
The Inequitable Conduct Defense Lives on: 2003 Federal Circuit Decisions and Their Impact, The John Marshall Review of Intellectual Property Law, September 2004

Publications & Speaking Engagements

Best Lawyers in America, 2024-2025 by The Best Lawyers in America

Thomas R. Johnson

Practices

Industries

Education

Admissions

Professional Affiliations

Publications & Speaking Engagements

Awards & Recognitions