Brian A. Tollefson

Practice Areas

Intellectual Property

Brian A. Tollefson is a seasoned patent litigator and prosecutor and is experienced in patent, copyright, and trade secret matters, as well as in all aspects of intellectual property acquisition, monetization, enforcement, and defense.  He also has significant mediation and alternative dispute resolution experience.

Brian has represented both plaintiffs and defendants in over 40 patent infringement litigations in Federal District Courts and has prepared and prosecuted both U.S. and international patent applications.  He has extensive experience conducting USPTO proceedings, including AIA post grant, inter partes and business method patent reviews, reissue and reexamination proceedings, appeals, examiner interviews, and petitions to the Director.

In addition to his work in the courtroom, Brian is also skilled in patent portfolio mapping, auditing, valuation, and acquisition, as well as in e-discovery and forensic sciences.  He has worked on numerous transactional matters concerning licensing, mergers, and joint ventures, and has experience with various types of consulting and development documents, such as negotiation, drafting, and enforcement agreements.  Additionally, Brian has counseled clients on a number of opinion matters, offering assistance with essentiality, due diligence, validity, and infringement issues.

Prior to his career as a lawyer, Brian worked as a software engineer and project manager for a private company, where he managed, programmed, and designed software and coordinated multimillion-dollar system replacement projects.  As a result of his engineering training, Brian is well-acquainted with a vast span of technologies and industries, including finance and business methods, electronic trading, e-commerce, computer hardware and software, telecommunications, semiconductors, process controls, radiation, nuclear operations and compliance, and automotive and engine design.

Brian earned his B.S. in electrical engineering from the Virginia Tech and his J.D. from the University of Maryland Francis King Carey School of Law.

  • University of Maryland Francis King Carey School of Law, J.D., 1998
  • Virginia Polytechnical Institute and State University, B.S.E.E., 1991
  • Circuit Court of Appeals for the Federal Circuit
  • District of Columbia
  • Maryland
  • U.S. Patent and Trademark Office
  • United States District Court for the District of Maryland
  • Rosetta-Wireless v. Apple Inc. et al., No.15-cv-799 (D. NDIL)
  • Odyssey Wireless, LLC v. LG Electronics USA, No. 14-cv-492 (E.D. NC)
  • SecureBuy, LLC v. CardinalCommerce Corp., No. 13-cv-1792 (D. DEL) (1st chair)
  • SecureBuy, LL v. CardinalCommerce Corp., No. 13-cv-417 (S.D. MISS) (1st chair)
  • FlatWorld Interactives LLC v. LG Electronics Inc. et al., No. 12-cv-964 (D. DEL)
  • BlueBonnet Telecomm, LLC v. LG Electronics U.S.A. Inc. et al., No. 13-cv-511 (E.D. TX)
  • TV Interactive v. Sony Corp, LG Electronics et al., No. 10-cv-475 (N.D. Cal.)
  • SimpleAir v. LGE et al., No. 11-cv-416 (E.D. TX)
  • MyPort IP v. LG Electronics et al., No. 11-cv-246 (E.D. TX)
  • Parallel Networks v. LG Electronics et al., No. 10-cv-491 (E.D. TX)
  • Cypress Semiconductor Corp. v. LG Electronics et al., No. 4:13-cv-4034 (N.D. CA)
  • Netratings v. Visual Sciences, No. 2:05-cv-349 (EDVA)
  • Cornerstone v. Breckenridge, No. 8:08-cv-02999 (DKC)
  • Breckenridge v. Cornerstone, No. 08-cv-2999 (D. MD)
  • VA Filtrations USA LLC v. Maverik North America, No. 5:11cv01134  (N.D. Cal.) (1st chair
  • Vinovation v. VA Filtration USA Inc., USDC ND CA 11-1134
  • Garnet Digital v. LG Electronics, USDC ED TX 11-00647
  • Unverferth v. CrustBuster/Speed King, Civil Action 2:11-cv-0184 (SDOH) (1st chair)
  • CBOE Inc. v. International Securities Exchange, LLC, No. 12-cv-09085 (SDNY)
  • ITG v. Liquidnet, Inc., No. 10-cv-6494 (SDNY)
  • Paratek Microwave, Inc. v. Agile Materials and Techs., Inc. Civil Action No. 05-4121 (C.D. Cal.)
  • ResQNet v. Lansa (first district court action ), 2008-1365-1366, 2009-1030 (Fed. Cir. Feb. 5, 2010)
  • LG Electronics Inc. et al. v. Toshiba Samsung Storage Tech. Corp., No. 12-cv-1063 (D. DEL)
  • Napro v. Mylan, USDC WD PA 01-1048
  • Merck v. Mylan, No. 03-cv-1953 (GEL)
  • International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc., IPR2014-00097
  • International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc., IPR2014-00098
  • International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc., IPR2014-00099
  • SecureBuy v. CardinalCommerce, IPR2014-00545
  • LG Electronics, Inc. et al. v. Cypress Semiconductor Corp., IPR2014-01302
  • LG Electronics, Inc. et al. v. Cypress Semiconductor Corp., IPR2014-01342
  • LG Electronics, Inc. et al. v. Cypress Semiconductor Corp., IPR2014-01343
  • LG Electronics, Inc. et al. v. Cypress Semiconductor Corp., IPR2014-01386
  • LG Electronics, Inc. et al. v. Cypress Semiconductor Corp., IPR2014-01396
  • LG Electronics, Inc. et al. v. Cypress Semiconductor Corp., IPR2014-01405
  • LG Electronics, Inc. et al. v. Toshiba Samsung Storage Technology Korea Corporation, IPR2015-01642
  • LG Electronics, Inc. et al. v. Toshiba Samsung Storage Technology Korea Corporation, IPR2015-01644
  • LG Electronics, Inc. et al. v. Toshiba Samsung Storage Technology Korea Corporation, IPR2015-01653
  • LG Electronics, Inc. et al. v. Toshiba Samsung Storage Technology Korea Corporation, IPR2015-01659
  • LG Electronics, Inc. et al. v. Rosetta-Wireless Corp., IPR2016-01516
  • LG Electronics, Inc. et al. v. Toshiba Samsung Storage Technology Korea Corporation, IPR2016-01677
  • LG Electronics, Inc. et al. v. Toshiba Samsung Storage Technology Korea Corporation, IPR2016-01678
  • International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc., CBM2013-00049
  • International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc., CBM2013-00050
  • International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc., CBM2013-00051
  • SecureBuy v. CardinalCommerce, CBM2014-00035
  • SecureBuy v. CardinalCommerce, CBM2014-00036
  • SecureBuy v. CardinalCommerce, CBM2014-00037

Brian A. Tollefson

Partner

Phone: 617-456-8099

Email: btollefson@princelobel.com

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