Timothy Bianchi

Timothy E. Bianchi is a principal of Schwegman Lundberg & Woessner, P.A. He is active in patent procurement, patent challenges, opinions, due diligence, acquisitions, and patent litigation strategy. Mr. Bianchi represents patent owners and petitioners in inter partes reviews (IPRs) and reexaminations, many of which are involved in concurrent litigation. His background is in medical devices, signal processing, communication electronics, computer hardware, and software.  He has electrical engineering and research experience from employment with IBM, Honeywell, and the University of Minnesota.

Mr. Bianchi has been named in IAM Global Leaders by IAM magazine (Law Business Research) (2020 – 2021), IAM Strategy 300 by IAM magazine (Law Business Research) (2017-2019) and IAM Patent 1000 by IAM magazine (Law Business Research) (2012-2020); a “Minnesota Super Lawyer” by Thomson Reuters (2004-2021); and “PTAB Litigator of the Year” by Managing IP magazine (2015) and “IP Star” by Managing IP magazine (2020 and 2021) (Managing IP is part of Legal Benchmarking Limited).

His blog (www.ReexamLink.com) covers the dynamics and strategies of patent procurement, patent challenges, and patent litigation.

William Mitchell College of Law
St. Paul, MN, 1994, J.D.
Honors: Magna Cum Laude

Minnesota
U.S. Court of Appeals Federal Circuit
U.S. Patent and Trademark Office

American Intellectual Property Law Association
Minnesota Intellectual Property Law Association
American Bar Association
Minnesota State Bar Association
Hennepin County Bar Association
Institute of Electrical and Electronics Engineers
Federal Circuit Bar Association
Patent and Trademark Office Society

The Naples Patent Experts Roundtable, Naples (2017)

Iowa Intellectual Property Law Association, Riverside (2016)

MinnCLE Midwest IP Institute, Minneapolis (2016)

AIPLA Spring Meeting, Minneapolis (2016)

MD&M Minneapolis Conference (2016)

Minnesota CLE, Minneapolis (2016)

Patexia Webinar Series (2016)

Midwest IP Institute, Minneapolis (2015)

Practicing Law Institute, San Francisco (2015)

New York State Bar Association, New York (2015)

Association of Corporate Patent Counsel, Chicago (2014)

AIPLA Spring Meeting, Philadelphia (2014)

Practicing Law Institute, San Francisco (2014)

Law Seminars International Best Practices in Patent Monetization, San Francisco (2014)

The Institute of Patent and Trademark Attorneys of Australia (2014)

Minnesota CLE, Minneapolis (2013)

Partnering in Patents, U.S. Patent & Trademark Office, Arlington (2013)

Minnesota CLE, Webinar (2013)

Tips for the Prosecution Team (2013)

Midwest Intellectual Property Institute, Minnesota Intellectual Property Law Association, Minneapolis (2013)

AIPLA Spring Meeting, Seattle (2013)

Minnesota CLE, Minneapolis (2013)

Client Webinar (2013)

The Collaborative, Minneapolis (2013)

Iowa Intellectual Property Law Association, Bettendorf (2012)

Midwest Intellectual Property Institute, Minnesota Intellectual Property Law Association, Minneapolis (2012)

Minnesota Intellectual Property Law Association, covering recent changes in the law of post-issuance procedures, including post grant review, inter partes review, and ex parte reexamination.  Discussed the role of the America Invents Act (AIA) in patent prosecution and litigation.  Discussed recent cases including Marine Polymer v. Hemcon (Fed. Cir. 2012, en banc), and In re Baxter(Fed. Cir. 2012), (Minneapolis, 2012)

Minnesota State Bar Association CLE. Tim spoke on “New, Revised and Now-Extinct Post-Issuance Proceedings”  This speech covered changes to post-issuance practice under the America Invents Act (AIA), in particular, post-grant review, inter partesreview, inter partes reexamination, ex parte reexamination, supplemental examination, and covered business methods under the AIA.  (Minneapolis, 2011)

10th Annual Midwest Intellectual Property Institute for Minnesota CLE (Minneapolis, 2011)

AIPLA Electronics & Computer Patent Law Summit, St. Paul, MN (2011)

Minnesota High Tech Association (MHTA) Spring Conference, Minneapolis (2011).

Minnesota Medtech Businesses Thrive in Myriad Therapies – The Collaborative Convergence Series on Medtech, Minneapolis (2011).

AIPLA Winter Meeting, Orlando (2011) 2010

Strafford CLE National Webinar (2010)

Minnesota CLE (2010)

The Collaborative (2010)

Minneapolis (2010)

MIPLA Patent Prosecution Committee (2010)

Midwest IP Institute, (2009)

Clarion Legal at Thomson Reuters, Inver Grove Heights (2009)

The Collaborative (2009) 2008

MIPLA Patent Prosecution Committee(2008)

MIPLA Patent Prosecution Committee (2008)

The Collaborative, Minneapolis (2008)

Vistage Seminar, Minneapolis (2008)

Washington D.C. and Minneapolis (2007)

Midwest IP Institute (2006)

MIPLA Patent Prosecution Committee (2006)

Minneapolis (2006)

Quoted in MDDI Magazine Article: The Art of Intellectual Property (2006)

Loyola Law School, Los Angeles (2006)

MIPLA (2005)

Minnesota State Bar Association (2005)

Claim Construction in view of Phillips v. AWH, MIPLA (2005)

MIPLA Patent Prosecution Committee (2004)

Minnesota CLE (2004)

Minnesota State Bar Association (2004)

Hennepin County Bar Association (2004)

SLW Webinar (2004)

MIPLA Patent Prosecution Committee (2003)

MIPLA Patent Prosecution Committee (2003)

Biomedical Alley Conference, Minneapolis (2003)

SLW CLE Webinar (2002)

MILE Seminar (2002)

The Collaborative, Minneapolis (2001)

Minnesota State Bar Association, Minneapolis (2000)

AUTM Central Regional Meeting, Cincinnati (2000)

AIPLA Advanced Computer and Electronics Patent Practice Seminar, San Francisco and New Orleans (2000)

• Counsel for Patent Owner in multiple IPRs and other post-grant proceedings

• IPR and litigation co-counsel in multiple IPR and district court actions

• Counsel for Patent Owner in IPR

Unwired Planet v. Square (2015)

• Counsel for Patent Owner in multiple CBM patent reviews

• Counsel for Patent Owner 3M in multiple IPRs

• IPR and Reexamination Counsel in multiple IPR and reexamination proceedings

• Counsel for Patent Owner in parallel IPR and CBM trials

• Counsel for Petitioner in multiple IPRs and Litigation Support

• Counsel for Petitioner in CBM

• Counsel for Petitioner in IPR

• Defensive due diligence, case strategy and posture, pre and post-suit communications

• Patent law expert for Toro (patent owner) – litigation strategy with litigation team

• Inter partes reexamination counsel

• Ex parte reexamination counsel

• Ex parte reexamination counsel

• Defended client as second chair litigation support in patent infringement case
• Participated in filing defensive reexamination of asserted patent
• Presented defects in patent case to patent owner to achieve settlement

• Patent license case involving complex patent license issue and pending reexaminations
• Defended client as second chair in litigation
• Provided counsel on several patents in reexamination and about to issue from complex prosecution

• Patent infringement case – orchestrated declaratory judgment action to settle case

• Ex parte reexamination counsel

• Interference counsel for Smart Technologies (non-party)

• Negotiated license agreement of patent portfolio to avoid suit in EDTX
• Advising client on complex prosecution and reexamination activities and license options

• Negotiated license agreement of patent portfolio to avoid suit
• Advising client on complex prosecution and reexamination activities and license options

• Patent Infringement Case against eight industry co-defendants
• Second chair litigation support
• Presented case to magistrate judge in mediation
• Settled matter after Markman hearing

• IP ownership dispute

• Patent infringement indemnification case