Karen D. McDaniel

Partner Minneapolis

Summary

Karen has spent the last 25 years assisting clients with intellectual property matters. She is a registered patent attorney with a background in chemistry.

Litigation Experience
A veteran of more than 75 lawsuits involving IP, Karen has been entrusted with cases having significant economic impact to her clients. She has secured damages awards on behalf of clients totaling several hundred millions of dollars (in reported decisions), and has recovered or helped her clients to avoid paying many times that amount in defense verdicts and confidential settlements and license agreements. Karen’s teams have a 4-0 win record at trial on cases where the amount in dispute exceeds $50 million dollars.

Her litigation practice is national in scope, and she has appeared in courtrooms across the country. Her areas of expertise include patent infringement trials, trademark infringement trials and trade secret trials.

Karen's previous experience as in-house litigation counsel to the largest medical device manufacturer in the world means she understands litigation from the client’s point of view and employs client-driven values in her practice today.

Counseling/Transactional Experience
Karen engages in high-level strategic counseling around IP issues with clients of all sizes. She works to ensure that each company is using intellectual property rights in a way that enhances its unique business objectives. Her work includes development of worldwide patent and trademark portfolios, licensing in and out technology, and structure and negotiation of joint development and partnering agreements. Karen also has experience in M&A support, addressing intellectual property and information technology issues related to the merger, acquisition and divestiture of businesses.

Awards

  • Honoree, The Best Lawyers in America, Litigation - Intellectual Property (2015 - present)

  • Honoree, Super Lawyer, Minnesota Super Lawyers (2014 - 2018)

  • Top Rated Lawyer, American Lawyer Media and Martindale-Hubbell (2013)

  • Attorney of the Year, Minnesota Lawyer (2012)

  • AV Preeminent Peer Review Rating by Martindale-Hubbell (2019)

  • Honoree, Who’s Who in American Law

  • Honoree, Who’s Who Among Rising Young Americans

  • Honoree, Madison’s Who’s Who

  • North Star Lawyer, Minnesota State Bar Association (2012)

  • Fellow, American Bar Foundation

All Service Areas

Education

  • University of Wisconsin Law School

    cum laude

  • University of Wisconsin-Madison

Admissions

  • State - Minnesota
  • State - Wisconsin
  • Federal - Federal Circuit Court of Appeals
  • Federal - District of Minnesota
  • Federal - Eastern District of Wisconsin
  • Federal - Northern District of Florida
  • Federal - Western District of Wisconsin

Notable Matters

  • Represented Fortune 100 manufacturing company in patent infringement dispute against competitor relating to synthetic orthopedic casting tapes. Obtained $129 million verdict in favor of client, which verdict was upheld on appeal.
  • Represented Fortune 200 medical device manufacturer in patent infringement litigation related to patent on stent grafts. Non-infringement ruling and $0 award where plaintiff sought $85 million in damages.
  • Represented Fortune 200 medical device manufacturer in patent litigation on patents related to shape memory alloys asserted against company making PFO occluder devices. Obtained $57 million jury verdict in favor of client.
  • Represented Fortune 200 medical device manufacturer in patent litigation on patents related to shape memory alloys asserted against a company making stent grafts. On eve of trial, negotiated settlement agreement with favorable license terms for client.
  • Represented cosmeceutical client who was sued by a Fortune 500 pharmaceutical company for patent infringement on a chemical patent related to prostaglandins. Obtained favorable Markman ruling during claim construction, followed by summary judgment of non-infringement, which removed client from patent infringement claims.
  • Represented Fortune 200 medical device manufacturer patent holder in week-long bench trial in the Northern District of California on defendants' defense of obviousness type double patenting. Negotiated favorable confidential settlement on behalf of client before the opinion was issued.
  • Represented human resources company in week-long bench trial in Eastern District of Virginia against competitor who asserted a portfolio of family trademark rights. Complete non-infringement ruling obtained and client was able to continue full use of contested marks.
  • Represent accused infringer in a patent infringement action relating to vascular stent technology. Obtained complete stay of district court proceeding pending resolution of IPR, including all appeals.
  • Represented major food company in damages phase of insurance coverage dispute with insurer related to underlying event of grain supply tainted with pesticide. Two-month jury trial, resulting in $49 million verdict in favor of client.
  • Provide strategic counseling on intellectual property matters; license drafting and negotiation; portfolio development and pre-suit analyses for various companies.
  • Represent multiple companies in procurement and enforcement of worldwide patent and trademark rights.
  • Significant work in medical technologies, including synthetic casting tapes, hair enhancement formulas, stents (including self-expanding stents and drug-coated stents), stent grafts used to treat aneurysms, nutrition formulas, cosmetics, glucose sensors, PFO occluders, vascular plugs and spinal fixation devices.

Speeches and Publications

  • "Damages in the Post Rite-Hite Era: convoyed Sales Illustrate the Dichotomy in Current Damages Law", Journal of the Patent and Trademark Office Society, Vo. 78, No. 7, July 11, 1996.
  • "Proving Damages in Patent Litigation," Selected Legal Papers, American Intellectual Property Lawyers Association (AIPLA), Sept. 11, 1993.

Professional Affiliations

  • American Bar Association

    Former Fellow

  • Minnesota Intellectual Property Law Association

    Member

  • Minnesota State Bar Association

    Past member