Thomas J. Burger | Partner
Practice Areas: Categories: Licensing, Litigation/Dispute Resolution, Patents, Post Grant Options, Trademarks
Thomas J. Burger is a Partner with the firm and the main emphases of his practice are the representation of U.S. and non-U.S. clients in the acquisition, enforcement, and defense of patent and trademark rights. He has served as lead counsel or co-lead counsel in a number of intellectual property litigations, in which the cases primarily related to patent infringement (utility and design), patent license disputes, the enforcement of covenants not to compete, the protection of trademark registrations, and post-grant matters before the United States Patent and Trademark Office. Tom lives in Cincinnati with his wife Susan and their four children.
U.S. District Court for the Southern District of Ohio
U.S. Court of Appeals for the Federal Circuit
U.S. Patent and Trademark Office
Various Federal District Courts (via pro hoc vice)
University of Notre Dame Law School, J.D.
University of Notre Dame, B.S., Electrical Engineering
Member of the firm’s Executive Committee
Co-chair of the firm’s Post Grant Proceedings and Strategies Practice Group
Past President, Cincy IP
Cincinnati Bar Association
Ohio Bar Association
Intellectual Property Owners (IPO)
German Association for Industrial Property Law and Copyright (GRUR)
Federation International des Conseils en Propriete Industrielle (FICPI)
National Lawyers Association
Notre Dame Club of Greater Cincinnati, Past President
Munich Sister City Association, Past Officer
St. Antoninus Church: Club Board Member, Coach, Parish Counsel former member
Case Name: Gaymar Industries, Inc. v. Cincinnati Sub-Zero Products, Inc., et al.
Court: United States District Court Western District Of New York; Case No. 1:08-cv-00299-WMS
Description/Result: Plaintiff Gaymar sued our client in federal district court in Buffalo, alleging patent infringement and seeking a preliminary injunction and expedited proceedings. Successfully opposed plaintiff’s preliminary injunction motion, while also obtaining court-ordered stay of the lawsuit pending the outcome of USPTO Inter Partes reexamination proceedings, which was initiated shortly after service of the Complaint. The USPTO issued a Reexamination Certificate canceling all 134 claims of the patent in suit. Our client’s claim for attorneys’ fees under Section 285 remains pending.
Case Name: Klosterbrauerei Andechs v. Andechs Trading Company
Court: United States Patent And Trademark Office Before The Trademark Trial And Appeal Board; Proceeding No. 92049675
Description/Result: Succeeded in protecting the U.S. trademark registration rights of a well-known Bavarian Monastery, by canceling the trademark registrations of the challenger, Andechs Trading Company, via default judgment. Default was caused by our successfully asserting that opposing counsel was obligated to disqualify itself due to a conflict of interest. After opposing counsel withdrew, opponent failed to appoint new counsel, and our client won by default. No discovery was needed to successfully resolve the case.
Case Name: The Couple To Couple League International, Incorporated v. John F. Kippley, et al.
Court: United States Southern District Of Ohio Western Division; Case No. 06-cv-063
Description/Result: Represented plaintiff copyright owner in lawsuit against its founder, asserting the invalidity of a second copyright registration obtained by the founder for the same work. Negotiated a resolution of the lawsuit via mediation, after minimal discovery.
Case Name: Martin Kampitch, et al., v. Robert Lach, et al.
Court: United States District Court For The District Of Rhode Island; C.A. No. 05-351
Description/Result: Represented defendants who were sued for infringing a collection of alleged intellectual property rights held by six unrelated plaintiffs. The Complaint included a RICO count that alleged our client’s collusion with the Chinese Red Army. Successfully obtained a dismissal with prejudice of all claims of all the plaintiffs, by successfully opposing the pro hac vice motion of plaintiff’s lead attorney. The lawsuit was dismissed with prejudice within six months of being filed, and prior to the taking of discovery by any party.
Case Name: New Creative Enterprises, Inc. v. Team Beans, LLC d/b/a Forever Collectibles
Court: United States District Court For The Southern District Of Ohio Western Division; Case No. 1:08-cv-547
Description/Result: Represented plaintiff in the successful enforcement of copyright and trade dress rights related to its proprietary Garden Gnomes product line. The lawsuit settled shortly after filing the Complaint, with the defendant discontinuing infringement and paying our client a mutually agreeable amount based on infringing sales.
Case Name: Fieldturf International, Inc., et al., v. The Motz Group, Inc.
Court: United States District Court For The Southern District Of Ohio Western Division; Civil Action No. 1:05cv078
Description/Result: Assisted in representing local client, the defendant, in obtaining a court-ordered stay of this patent infringement lawsuit. Simultaneously represented the defendant, as Requester, before the USPTO in an inter partes reexamination of the patent in suit. The reexamination eventually resulted in a negotiated resolution of the dispute, thereby enabling the client to continue practicing the same technology that allegedly had infringed the patent in suit.
Case Name: Neil Sater D/B/A Wind Wonders By Neil Sater, V. Red Carpet Studios, LLC, et al.
Court: United States District Court Central District Of California Southern Division; Case No. SACV03-00906-CJC (RCx)
Description/Result: Represented alleged infringers, defendants, against infringement allegations of purported copyright owner. On behalf of defendants, negotiated settlement as to initial accused product, but then devised and implemented “design around” strategy to obtain a U.S. design patent on a modified product. This strategy served as the basis for subsequently defeating copyright infringement allegations against the modified product.
Case Name: Dr. Tassilo Bonzel v. Pfizer, Inc., et al.
Court: State Of Minnesota In Court Of Appeals; Case No. C9-03-47
Court: (Federal Court of Appeals For the Federal Circuit; Appeal No.: 05-1114)
Description/Result: Shared lead counsel responsibilities on behalf of licensor, a German interventional cardiologist who invented the “Monorail” catheter, in pursuing contract and tort claims against his former licensees. Successfully mediated one of the contract claims, resulting in a settlement payment of $80 million to the client. The remainder of the claims are still pending in Germany, after a series of forum non conveniens dismissals in the United States, first in Minnesota state court and then in Minnesota federal court, followed by the United States Court of Appeals for the Federal Circuit.
Case Name: Ohio Medical Instrument Company, Inc. v. Johnson & Johnson Professional, Inc.
Court: United States District Court Eastern District Of Kentucky Covington Division; Case No. 97-15
Description/Result: Our client, a local medical device company, successfully enforced a covenant not to compete against Johnson & Johnson and its Codman subsidiary. More specifically, court-ordered mediation resulted in an additional payment of $2.5 million to the client and an extension of 2.5 years on a prior 10-year covenant not to compete. Worked closely with German counsel to cause German police search which turned up the evidence that was used to initiate the enforcement proceedings. These mediated remedies supplemented a prior settlement from 1997, which had resulted in the client recovering a $3.9 million payment and a 10-year covenant not to compete. Shared co-lead counsel responsibilities in that prior 1997 case, in which the client had sued Codman for patent infringement under 271(f), trademark infringement, false designation of origin, fraud related to discovery misconduct in an even earlier case, and violations of a settlement agreement from that earlier case.