Sam concentrates his practice on complex intellectual property litigation, monetization and counseling matters at Carlson Caspers.
Sam’s litigation experience includes handling over 25 patent cases. They range from technologies involving chemicals to computer software. Many of Sam’s cases have involved pharmaceutical cases filed under the Hatch-Waxman Act (“ANDA litigation”). The patents involved in those cases have covered small molecules, polymorphs, various types of formulations, topical treatments, intravenous drugs, and methods of use. Sam has served as trial counsel and taken the lead on Markman and dispositive motions for cases involving drugs with annual sales in the hundreds of millions and billions. Outside of pharmaceuticals, Sam has litigated cases involving medical device technologies, computer-technologies, automotive vehicle design, business methods, and manufacturing processes. He also litigates matters involving trade secrets, unfair competition, trademarks, trade dress and copyrights. Sam’s experience includes contested administrative proceedings, including numerous inter partes reviews (IPRs) before the Patent Trademark and Appeal Board and several trademark disputes before the Trademark Trial and Appeal Board.
Sam has substantial experience counseling and identifying monetizing opportunities for clients outside of litigation via business collaborations, licensing opportunities, development and assignments of patent portfolios, and trade secret acquisition and maintenance. Sam led negotiations on behalf of a Fortune 500 company to acquire intellectual property rights to platform technology that is projected to serve as the foundation for a multibillion-dollar research program in the life sciences space. In another recent matter, Sam led an initiative to create an out-licensing program for technology in the bioagricultural field that has estimated value of over $100 million. Sam has counseled numerous clients on other technology-centric agreements, including research collaborations, joint ventures, intellectual property licenses, non-disclosure agreements, and material transfer agreements.
Sam spoke at 2017 BIO Korea on gene therapy and strategies within that space for licensing and litigation. He also recently moderated a panel at the 2017 Midwest IP Institute entitled “Strategy Considerations for Patent Enforcement Worldwide: A Panel of International Experts.” Sam has also given or hosted numerous talks on damages and pre-suit investigations.
Sam is active in the legal community and involved with various industry-related groups. He is part of the Midwest Intellectual Property planning committee and a board member of The Fund for Legal Aid. He also performs pro bono work, including through the Minnesota Innocence Project and the Children’s Law Center. Sam has been consistently named a “Rising Star” by Minnesota Law & Politics and Minnesota Super Lawyers magazine from 2008 to the present.
Boston University School of Law
J.D., cum laude
Health Law Concentration with honors
Dean’s Award for Trademark and Unfair Competition
University of Minnesota
B.S., Genetics Cell Biology and Development
Minnesota Supreme Court
U.S. District Court for the District of Minnesota
U.S. Court of Appeals for the Federal Circuit