Peter Forrest
Senior Attorney at Dicke, Billig & Czaja- Claim this Profile
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Bio
Credentials
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Pre-Trial Procedures | Trial Skills | Deposition Skills
National Institute of Trial Advocacy
Experience
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Dicke, Billig & Czaja, PLLC
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United States
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Law Practice
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1 - 100 Employee
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Senior Attorney
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2000 - Present
Joined Dicke, Billig & Czaja in 2010, integrating portable private practice as Special Partner at Moore & Hansen, another IP firm (2007-2010), and before that as Principal (equity partner) at Gray Plant Mooty, a general practice firm (2000-2007). At all these firms my practice has been: • Drafting and prosecuting patent applications in US and foreign countries. • Designing and implementing global intellectual property strategies and technology development plans, especially involving patents, trade secrets, litigation, and licensing. • Assessing legal risks of new products and recommending design modifications. • Negotiating license and product development agreements worldwide. • Leading and supporting active litigation. Connect with me on LinkedIn for linked samples of recent work, a list of technology areas I've worked in, and a list of my litigation experience at the trial and appellate levels. In addition, at Gray Plant Mooty my work was especially rewarding: • Served on cross-functional teams representing serving early stage companies in mergers and acquisitions, licensing, and litigation. • Chaired Technology Committee (2001-2002) during a firm-wide upgrade of network cabling, protocols, and firewall/routers; replacement of ~250 desktop computers and servers; and complete upgrade of operating systems, office suites, and specialized legal practice applications. • Active contributor to website and intranet development teams.
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Medtronic
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United States
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Medical Equipment Manufacturing
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700 & Above Employee
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Patent Attorney
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1996 - 1999
Hired to a newly-created full-time assignment supporting Cardiac Surgery, Heart Valves, and New Ventures business units, directly reporting to Vice President and Chief Patent Counsel. • Managed patent applications and opinions assigned to outside counsel and their foreign associate counsel. • Chaired cross-functional patent review committees. • Developed global intellectual property strategies and technology development plans, especially involving patents, trade secrets, litigation, licensing, and new product risk assessment. • Member of due diligence teams for mergers, acquisitions, and minority investments, focusing on technology assessment and valuation, legal analysis, and financial risk assessments. • Negotiated license and product development agreements worldwide. • Assisted active litigation in US and overseas. • Completed bulk of coursework and thesis for graduate degree in Management of Technology from University of Minnesota. • Gained broadened exposure to medical device technologies, adding prosthetic mechanical and tissue heart valves; heart-lung bypass oxygenators, filters, and reservoirs; arterial, venous, and cardioplegia cannulae and accessories; centrifugal and axial blood pumps; minimally invasive cardiac surgery products; blood diagnostics and treatments; fluid-assisted RF ablation equipment; and implantable sleep apnea stimulators.
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Guidant (now Boston Scientific)
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Greater Minneapolis-St. Paul Area
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Intellectual Property Attorney
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1993 - 1996
Hired to a newly-created position as first (and sole) in-house patent and trademark attorney and Assistant Secretary at Cardiac Pacemakers, Inc. [CPI], at that time a subsidiary of Eli Lilly and Co. Lilly soon spunout and IPOed CPI as part of Guidant Corporation (acquired by Boston Scientific much later). Directly reported to General Counsel of CPI. • Responsible for all US and international intellectual property issues for $400 million company in highly competitive and litigious medical device industry. • Managed patent applications and opinions assigned to outside counsel and their foreign associate counsel. • Brought key strategic patent applications in-house for greater focus and value to the business. • Wrote and supervised infringement and validity opinions, license agreements, and product development agreements. • Designed and coded first docketing database for CPI's patents. Based on that data, designed industry-tailored prosecution strategy to optimize CPI's portfolio life when Congress adopted 20-year patent terms. • Championed and successfully executed on a multi-million-dollar patent term extension of three years, by advocating a close reading of 35 USC 156(a)(5)(a) (the patent term extension provisions of the Hatch-Waxman Act). This was ultimately affirmed in a case of first impression, Cardiac Pacemakers, Inc. v. St. Jude Medical, Inc., 381 F. 3d 1371, 1383-85 (Fed. Cir. 2004). • Completed CPI's internal manager training program, then "self-outsourced" with CPI's consent to a newly-hired outside law firm, Schwegman, Lundberg and Woessner [SLW] during 1995-96. This leveraged SLW's cutting-edge, patent-specific infrastructure and support staff to increase breadth and quality of CPI's entire patent portfolio. CPI remains a substantial client of SLW today. • Added technical experience in implantable cardiac rhythm management devices and therapies; A/D signal analysis; transvenous catheters; and capacitor and battery chemistry.
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3M
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United States
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Industrial Machinery Manufacturing
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700 & Above Employee
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Intellectual Property Counsel
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1987 - 1993
Hired as a full-time Patent Trainee while still in law school (1987-88), promoted at graduation to Intellectual Property Attorney (1988-93), and promoted again to Intellectual Property Counsel in 1993. • Responsible for all US and international intellectual property issues for client divisions and laboratories. • Appeared in European Patent Office opposition proceedings in Munich as well as private negotiations with multiple Japanese multinational firms in Tokyo. • Prepared and prosecuted patent applications, infringement and validity opinions, licenses and product development agreements. • Developed and implemented intellectual property strategies. • Managed patent applications and opinions assigned to outside counsel and foreign associate counsel. • Primary patent attorney for the Data Storage Diskette and Optical Technology Division, Government Research and Development Contracts Department, Applied Technology Laboratory, National Media Laboratory, and the Storage Media Laboratory. • Co-advised the Data Storage Tape Technology Division, Traffic Control Materials Division, and the Materials Application Laboratory. • Work involved magnetic, optical and magneto-optical data storage media and drives; microstructured optical surfaces, optical thin films and retroreflective materials; microwave and radar absorbing materials; high temperature superconductors; digital x ray imaging; and acoustical barrier materials.
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Honeywell
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United States
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Appliances, Electrical, and Electronics Manufacturing
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700 & Above Employee
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Sales Representative
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1982 - 1987
Highly successful consultative field sales of pneumatic, electric, electronic, and microprocessor-based systems for analog and digital temperature control, energy management and commercial building management. • Negotiated with building developers, operating engineers, consulting engineers and contractors. • Trained consulting engineers on system features, functions and benefits. • Exceeded sales and margin objectives every year. • Booked 162% of sales objective and 121% of gross margin objective over entire period. • Grew territory sales at compounded annual rate of 141%. • Grew territory margin at compounded annual rate of 158%. • Attended law school at night (1984-87).
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Education
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University of Minnesota-Twin Cities
Master of Science in Management of Technology -
William Mitchell College of Law
Juris Doctor (JD), Intellectual Property Law -
Seattle University
Bachelor of Science in Physics
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