Sam concentrates his practice on complex intellectual property litigation, monetization and counseling matters at Carlson Caspers.
Many of Sam’s litigation matters are patent disputes filed under the Hatch-Waxman Act (“ANDA litigation”). His experience includes pre-suit strategy through trial and appeal. Sam has served as trial counsel and argued dispositive and Markman motions for litigations having million- and billion-dollar markets at stake. He recently Sam obtained a favorable Markman ruling in case involving a drug having annual sales of over $200 million, causing the patentee to stipulate to non-infringement. Sam also served as trial counsel in a dispute involving tamper-resistant OxyContin® where the Carlson Caspers trial successfully invalidated all claims. This case was affirmed by the Federal Circuit. Sam’s other ANDA litigation experience includes cases involving small molecules, formulations and methods of use patents covering, among others, proton-pump inhibitors, phenidate drugs, combination therapies, sleep aids and oncology drugs. Sam also litigates patent cases involving other technologies, including medical device, mechanical arts, manufacturing processes and software. In these technology spaces, he represents both patentees and alleged infringers. Outside of patents, Sam litigates matters involving trade secrets, trademarks, trade dress and copyrights.
Sam also is familiar with contested administrative proceedings. He has litigated numerous inter partes reviews (IPRs) before the Patent Trademark and Appeal Board (“PTAB”), as well as trademark disputes before the Trademark Trial and Appeal Board (“TTAB”).
Sam has substantial experience monetizing intellectual property outside of litigation. For example, he has lead 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 matter, Sam led an initiative to create an out-licensing program for technology in the bioagricultural field. The first license agreement executed for the program was valued at over $25 million. Sam also has led negotiations involving research collaborations, intellectual property licenses, non-disclosure agreements, and material transfer agreements.
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 representing children through 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 2017.
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