Caroline Marsili - Carlson Caspers

Email: cmarsili@carlsoncaspers.com

Phone: (612) 436-9652

Caroline Marsili Super Lawyers Badge - Carlson Caspers

Caroline’s practice encompasses a broad scope of intellectual property services, with an emphasis on patent litigation and trademark law, including trademark prosecution, litigation, T.T.A.B. proceedings, and ex parte petitions.  She also has experience in freedom to operate and clearance investigations, antitrust litigation, settlement negotiations, and inter partes review proceedings.

Caroline works on matters involving a range of technologies and industries, including pharmaceuticals, medical devices, and telecommunications.  An experienced trial attorney, she has tried cases in federal courts across the country.  Caroline has been ranked by Patexia as among the top 100 “most successful and best performing ANDA attorneys” and top 100 attorneys representing ANDA defendants.

Beyond her patent litigation experience, Caroline brings first-hand expertise to all facets of trademark law.  She maintains proficiency in changes in the law and policy to ensure she presents clients with the most efficient and cost-effective strategy to protect trademark rights. She obtained institution of an ex parte trademark reexamination proceeding within the first few months of the proceeding’s implementation and has presented on the Trademark Modernization Act of 2020.

Caroline has been a member of the firm’s Diversity, Equity & Inclusion Committee since its inception, serves on the firm Hiring Committee, and is a frequent contributor to the ANDA Advisor’s Blog.  She routinely facilitates the firm’s involvement in Minnesota’s affinity bar organizations, non-profit legal service providers, and professional organizations.

Caroline has led the firm’s involvement in Mid-Minnesota Legal Aid’s Associates’ Campaign for several years, serving as a Campaign co-chair, and currently serves on the Fund’s Executive Committee.  Caroline was named a “Rising Star’ in Minnesota Super Lawyers for 2019 through 2022, and was recently selected as one of Minnesota Lawyer’s Up & Coming Attorneys for 2022.

EDUCATION

University of Minnesota Law School
J.D., magna cum laude
Editor-in-Chief, Minnesota Journal of Law, Science & Technology

Carleton College
B.A., Biology, cum laude

BAR ADMISSIONS

Minnesota Supreme Court
United States District Court for the District of Minnesota

EVENTS & PUBLICATIONS

Articles and Publications

“Key IP Legal Trends 2017-18 in Brief – Biotechnology, Medical Devices, and Digital Health,” Ch.12, The IP Book, 16th Ed. (2018)

“Intellectual Property Misuse: Licensing and Litigation,” Ch. VI, Copyright and Trademark Misuse, 2d. Ed. (2020)

“The Preemptive Power of Federal Patent Law: A Framework to Govern State Antitrust Challenges to Pay-for-Delay Settlements,” Note, 14 Minn. J. L. Sci. & Tech. 849 (2013)

Speaking Engagements, Webinars, and Presentations

“NFTs Are on Your Doorstep: Are You Ready? IP Considerations, Pitfalls, and Best Practices,” ACC-MN CLE, April 20, 2023

“Trademarks in the Influencer Era: The Trademark Modernization Act and Protecting Your Marks on Social Media,” Caroline Marsili and Barbara Grahn, ACC Annual Conference, June 18, 2021

“Process Reigns Supreme in Contested PTO Validity Challenges,” Todd Werner, Peter Kohlhepp, Caroline Marsili, RadioFree IP®, Carlson Caspers webinar series, Oct. 22, 2020

“Patent Law Developments in the Biotechnology, Medical Device, and Digital Health Industries,” Midwest IP, Sept. 28, 2018

RECOGNITION

Patexia ANDA Litigation Intelligence Report 2023, Top 100 (Most Active, Best Performing)
Minnesota Lawyer, Up & Coming Attorney, 2022
Minnesota Super Lawyers® “Rising Star”: 2019 – 2022

REPRESENTATIVE CASES

Laboratoire HRA Pharma v. Teva Pharmaceuticals USA, Inc. (ulipristal) 

Sanofi-Aventis v. Glenmark Generics, Inc. USA (dronedarone)

Takeda Pharmaceutical Company Limited, et al. v. Sun Pharma Global FZE, et al. (lansporazole ODT)

Pfizer v. Sun (Palbociclib)

Becton Dickinson v. NeuMoDx & Qiagen

ACIGI v. Fuji Medical Instruments

Boehringer Ingelheim v. Sun (Afatinib)

Pharmacyclics & Janssen v. Sun (Ibrutinib)

Fractus v. CommScope

CommScope v. Clearfield

Alcon v. Watson (Olopatadine)

Merck v. Dr. Reddy’s Laboratories (Ethinyl estradiol and etonogestrel)

Amgen v. Sun (Cinacalcet)

Eli Lilly v. Sun (Tadalafil)

Luminara Worldwide v. Shenzhen Liown