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brian

Brian Tollefson

Partner

Contact Information

About Brian Tollefson

Areas of Practice:

  • Intellectual Property Litigation
  • Patent Post-Grant Proceedings
  • Patent & Trademark Prosecution
  • Licensing & Technology Transactions
  • Patent Monetization and Valuation
  • Litigation Finance

 

Brian Tollefson is a seasoned Intellectual Property Attorney with over 25 years of expertise across patent, copyright, trademark, trade secret, privacy and associated intellectual property domains. Brian primary focuses his practice on patent and trademark acquisition, enforcement and monetization, including litigation in Federal Courts and before the United States Patent and Trademark Office. Brian has been managing patent portfolios for Fortune 1000 companies for over 20 years and has considerable expertise in IP mapping and valuation, with a particular expertise in the financial services sector.

Brian has extensive expertise with U.S. PTO proceedings, including AIA Post Grant Review, Inter Partes Review, trademark oppositions, as well as reissue and reexamination proceedings, and appeals.

Before joining The Devlin Law Firm, Brian spent 15 years with Rothwell Figg Ernst and Manbeck, a Washington DC based IP boutique, where he was a partner for 10 years. Brian also operated his own full-service IP law firm for 5 years, serving a variety of clients from start-ups to Fortune 500 companies.

Brian is proficient in handling transactional matters, including licensing, joint ventures, mergers, due diligence, development and consulting agreements.

Brian’s technological competence spans a diverse array of fields including telecommunications, network computing, computer processors, AI and machine learning, business methods, compliance, financial services, electronic trading, blockchain, financial exchanges, computer software and hardware, internet and e-commerce, semiconductor, process controls, automotive and engine design, bio-information, optics, and medical devices.

Education

  • J.D., University of Maryland School of Law, 1998
  • B.S., Electrical and Electronics Engineering, Virginia Tech, 1991

Court Admissions

  • Maryland
  • United States Patent and Trademark Office
  • District Court of Maryland
  • Federal Court of Appeals for the Federal Circuit

Languages

English

Representative Cases

  • Freedom Services Inc. v. Freedom Services, LLC, 1:23-cv-01625-MJM (D.Md.) – Represented Defendant in trademark infringement and unfair competition matter leading to favorable settlement for Defendant.
  • Uniloc 2017 LLC v. Samsung Electronics America, Inc. et al, 2-18-cv-00506 (EDTX) – Advanced patent infringement claims for plaintiff patent owner leading to settlement.
  • Uniloc v. Apple et al., 3:18-cv-00572-WHA (N.D. Cal.) – Advanced patent infringement claims on behalf of plaintiff patent owner leading to settlement.
  • Odyssey Wireless, LLC v. LG Electronics USA, No. 14-cv-492 (E.D. NC) – Represented defendant in a multidistrict litigation leading to favorable settlement.
  • FlatWorld Interactives LLC v. LG Electronics Inc. et al., No. 12-cv-964 (D. DEL) – Represented defendant accused of patent infringement leading to favorable settlement.
  • TV Interactive v. Sony Corp, LG Electronics et al., No. 10-cv-475 (N.D. Cal.) – Represented defendant accused of patent infringement leading to favorable settlement.
  • Parallel Networks v. LG Electronics et al., No. 10-cv-491 (E.D. TX) – Represented defendant accused of patent infringement prevailing on summary judgment.
  • Breckenridge v. Cornerstone, No. 08-cv-2999 (D. MD) – Represented defendant accused of patent infringement mediating favorable settlement.
  • VA Filtrations USA LLC v. Maverik North America, No. 5:11cv01134 (N.D. Cal.) – Represented plaintiff patent owner resulting in favorable settlement.
  • Unverferth v. CrustBuster/Speed King, Civil Action 2:11-cv-0184 (SDOH) – Advanced a patent infringement claim for plaintiff patent owner leading to favorable settlement including an injunction.
  • ITG v. Liquidnet, Inc., No. 10-cv-6494 (SDNY) – Represented DJ plaintiff accused of patent infringement prevailing on summary judgment.
  • Paratek Microwave, Inc. v. Agile Materials and Techs., Inc. Civil Action No. 05-4121 (C.D. Cal.) – Advanced a patent infringement claim for plaintiff patent owner leading to favorable settlement.

Representative Post-Grant Reviews Cases

  • Askeladden LLC v. Intercurrency Software LLC, IPR 2024-00375-378
  • International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc., IPR2014-00097-99
  • LG Electronics, Inc. et al. v. Toshiba Samsung Storage Technology Korea Corporation, IPR2015-01642, 44, 53 and 49.

Articles, Presentations, and Publications

  • AIPLA
  • INTA