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Austen Zuege

Austen Zuege

Patent & Trademark Attorney, Shareholder

Contact Info

Austen Zuege focuses his practice on intellectual property (IP) law in both transactional and litigation settings, including patent, trademark, copyright, trade secret and domain name dispute matters. This includes international IP application filings and prosecution such as Paris Convention patent applications, PCT applications and related national stage patent applications, and the coordination and supervision of global IP portfolios. He has familiarity with a variety of technical areas.

Austen has extensive experience organizing and conducting complex freedom-to-operate studies, advising on IP strategies, conducting validity/non-infringement opinion of counsel analyses, negotiating agreements, enforcing rights and defending clients in contentious IP disputes, and creating strategic plans for companies. He embraces processes and systems from an engineering and process improvement standpoint. He also writes and speaks about IP issues, and can translate complex legal issues into actionable tips and strategies for clients and their inside counsel.

In his spare time, Austen is an avid cyclist. He commutes to work by bike year-round, including snowy Minnesota winters.

Bar Admissions

  • United States Patent and Trademark Office
  • Minnesota State Bar
  • Federal Court for the District of Minnesota
  • Court of Appeals for the Federal Circuit

Education

  • University of Illinois College of Law, Juris Doctor, cum laude
  • University of Wisconsin-Madison, B.S. Industrial Engineering

Professional Affiliations

  • Member, American Intellectual Property Law Association (AIPLA)
  • Member, Minnesota Intellectual Property Law Association (MIPLA) – Board Member (2021-present)
  • Member, Minnesota State Bar Association (MSBA)
  • Member, Hennepin County Bar Association (HCBA)
  • Member, International Trademark Association (INTA)

Honors

  • Recognized in The Best Lawyers in America© (2018-2022) in the field of patent law
  • Minnesota Super Lawyers®, Rising Star (2013-2018)
  • Top Patent Proescutor, Patent Buddy ® (2011)

Areas of Practice

  • Patents
  • Trademarks
  • Copyrights
  • Trade Secrets
  • Domain Name Disputes
  • Freedom-to-operate Studies
  • Validity/non-infringement opinions
  • IP Litigation
  • PCT National Phase Filings and Paris Convention filings in the US
  • Global Patent & Trademark Portfolio Management and Strategy
  • USPTO Trial Proceedings (TTAB/PTAB)
  • Local Counsel for IP Disputes in the District of Minnesota
  • IP Licensing

Areas of Technical Expertise

  • Mechanical Devices
  • Electrical Systems, Electronics and Electromechanical Devices
  • Software
  • Aerospace Technologies
  • Airfoils and Fans
  • Medical Devices
  • Automotive Technologies
  • 3-D Printing and Additive Manufacturing
  • Communications and Networking
  • Data Storage (e.g., Hard Drives)
  • Sensors, Transducers, & Control Systems
  • Agricultural Equipment
  • Building Systems Including Elevators and Moving Walkways/Escalators
  • Office Products
  • Recreational Equipment
  • Environmental Systems (e.g., HVAC)

Representative Matters

  • Patent Prosecution – Prepared, prosecuted and supervised hundreds of patent applications, including PCT and foreign counterparts, on a variety of technologies on behalf of multi-national corporations, medium-sized businesses, small businesses, and individual inventors
  • Patent Prosecution – Filed and prosecuted utility and design applications in the United States based on foreign priority filings, including PCT national phase entries and Paris Convention filings
  • Patent Risk Management – Coordinated patent clearance/freedom-to-operate studies for billion-dollar product lines; advised client regarding risk management and patent avoidance strategies, and prepared associated opinions of counsel
  • Patent Litigation – Worked on litigation team for a leading automotive component business asserting multiple patents against competitor; negotiated settlement of all claims; also successfully defended the patents-in-suit in five concurrent ex parte and inter partes reexaminations
  • Patent Litigation – Defended international maker of optical identification systems against non-practicing entity in the Eastern District of Texas, in a case involving most competitors in the industry; negotiated settlement resolving all claims
  • TM Prosecution – Prosecuted trademark registrations in the U.S. and managed global trademark portfolios; represented foreign applicants in U.S. Madrid protocol designations
  • TM Prosecution – Conducted searches and analyses of numerous proposed marks to assess registrability and potential infringement risks
  • TM Litigation – Implemented trademark policing and enforcement program for photo booth service company; successfully pursued infringement action with a default judgment obtained over Defendant’s active opposition
  • TM Litigation – Successfully defended registration and application of software startup in consolidated Trademark Trial & Appeal Board (TTAB) cancelation and opposition proceeding through Accelerated Case Resolution (ACR)
  • Domain Disputes – Obtained cancelation of domain name registration by client’s competitor in UDRP arbitration
  • Copyright Registration – Filed and obtained copyright registrations for a variety of types of works, including successful requests for reconsideration of refusals; advised clients regarding self-registration procedures
  • Copyright Litigation – Defended nonprofit in copyright infringement dispute

Exemplary Patents

  • U.S. Pat. No. 7,214,192 “Vascular Testing System”
  • U.S. Pat. No. 7,648,279 “Journal Air Bearing”
  • U.S. Pat. No. 7,821,437 “Line Noise Analysis and Detection and Measurement Error Reduction”
  • U.S. Pat. No. 7,929,248 “Top Bond Pad for Transducing Head Interconnect”
  • U.S. Pat. No. 7,966,807 “Vapor Cooled Static Turbine Hardware”
  • U.S. Pat. No. 7,984,656 “NSMS Flight Laser Detector System”
  • U.S. Pat. No. 8,030,807 “Electromechanical Energy Harvesting System”
  • U.S. Pat. No. 8,246,302 “Teeter-Restraint Device for Wind Turbines”
  • U.S. Pat. No. 8,315,058 “Capacitive Touch Interface Assembly”
  • U.S. Pat. No. 8,337,989 “Layered Thermal Barrier Coating With Blended Transition”
  • U.S. Pat. No. 8,430,154 “Nano-Particle Wave Heat Pipe”
  • U.S. Pat. No. 8,578,362 “Method For Downloading Software To An Electronics Product
  • U.S. Pat. No. 8,855,952 “Ram Air Turbine With Flux Regulated Permanent Magnet Generator and Testing Method”
  • U.S. Pat. No. 9,154,228 “Method and Apparatus for Signal Reception with Ambient Light Compensation”
  • U.S. Pat. No. 9,415,880 “Actuator for RAT Deployment”
  • U.S. Design Pat. No. D830,719 “Plant Stand”
  • U.S. Pat. No. 10,415,587 “Composite Fan and Method of Manufacture”
  • U.S. Pat. No. 10,612,605 “Viscous Clutch Fluid Capture System”
  • U.S. Pat. No. 11,129,533 “Secure Communications and Records Handling System and Associated Method”

Publications

Presentations

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