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Jake M. Holdreith

Attorney Profile

Top Rated Intellectual Property Litigation Attorney in Minneapolis, MN

Robins Kaplan LLP
800 LaSalle Avenue, Suite 2800
Minneapolis, MN 55402
Phone: 888-388-7261
Fax: 612-339-4181
Selected to Super Lawyers: 2000, 2005 - 2006, 2011 - 2021
Selected to Rising Stars: 1998 - 1999
Licensed in Minnesota Since: 1990
Practice Areas: Intellectual Property Litigation (60%), General Litigation (20%), Antitrust Litigation (10%), Intellectual Property (10%)
Languages Spoken: English, German
Attorney Profile

Jake M. Holdreith is partner at Robins Kaplan LLP and represents clients throughout the country in matters related to trademark law, patent law and intellectual property law. During his career, he has also managed cases in Asia and Europe and is known for his flair and creativity in the courtroom. As he manages complex lawsuits and counsels clients, he has tried several jury cases to verdicts in the multimillion-dollar range.

A member of the firm’s executive board, Mr. Holdreith is also the firm’s Health and Life Sciences Industry Group lead. Along with Minnesota, he is also admitted to practice in New York and has extensive experience in the technology, health sciences and life sciences industries. With over three decades of experience, he provides deep insight and successful representation in Hatch-Waxman cases and has a unique understanding of the challenges of trying to operate in complex regulatory and legal environments.

Fluent in English and German, Mr. Holdreith graduated from the University of Iowa College of Law and was licensed to practice in 1990. With a reputation for good development of strategy and strong communication, he is highly qualified to handle complex cases at any point during the litigation process.

During his successful career, Mr. Holdreith has handled jury verdicts in the amounts of $8 million, $25 million and $34.7 million as well as several patent defense wins. Trusted with some of the firm’s most important cases, he can see an issue from all angles and is known for his fine-tuned sense of legal and business priorities.

Practice Areas
  • 60%Intellectual Property Litigation
  • 20%General Litigation
  • 10%Antitrust Litigation
  • 10%Intellectual Property
Focus Areas

Litigation, Patents, Trademarks, Intellectual Property Law

Selections

14 Years Super Lawyers
2 Years Rising Stars
  • Super Lawyers: 2000, 2005 - 2006, 2011 - 2021
  • Rising Stars: 1998 - 1999

About Jake M. Holdreith

First Admitted: 1990, Minnesota

Verdicts/Settlements

  • Trial counsel to Collegium Pharmaceutical in Collegium Pharmaceutical Inc. v. Teva Pharmaceuticals USA, a Hatch-Waxman litigation matter involving 14 Orange Book-listed patents for the oxycodone product Xtampza ER. The case resulted in a settlement in which defendant Teva agreed to a consent judgment confirming that its proposed generic products infringe on Collegium’s asserted patents. Under the settlement, Collegium will grant Teva a license to market its generic version of Xtampza ER in the United States beginning on or after September 2, 2033. Lead counsel to Collegium Pharmaceutical, Inc., in a series of related cases involving seven patents owned by Purdue and related entities related to oxycodone. We obtained a judgment of invalidity of the three Orange Book listed patents in Purdue Pharma LP v. Collegium Pharm. case number MAD-1-15-cv-13099 on February 18, 2016, after succeeding in a motion to transfer the action from the District of Delaware to the District of Massachusetts. As a result, our client was able to obtain final approval for Xtampza ER and launch the product commercially. Co-lead trial counsel to Collegium Pharmaceutical, Inc., in a trial for Post-Grant Review before the United States Patent Trial and Appeal Board (“PTAB”). The PTAB instituted trial upon a finding that US Patent No. 9,693,961 owned by Purdue Pharma is likely invalid for lack of a written description, for lack of enablement, and/or indefiniteness, and as being anticipated by prior art. Lead trial counsel to defendant Amneal Pharmaceuticals in Amgen v. Amneal, a four-day Hatch-Waxman patent infringement trial before Judge Goldberg, sitting specially for the Federal District Court in Delaware. Obtained a defense finding of non-infringement on Amneal unique non-infringement defense that its proposed formulation of the blockbuster drug Sensipar does not infringe Markush limitations of the asserted patent. The case is Amgen v. Amneal et al., No. 1:16-cv-00853-MSG. The trial order and memorandum were issued on July 27, 2018. Further proceedings are pending. Lead counsel to defendant Collegium Pharmaceutical, Inc., in a patent infringement suit in the District of Delaware. Purdue Pharma asserts that the sale of immediate-release and extended-release Nucynta infringes U.S. Patent Nos. 9,861,583, 9,867,784, and 9,872,836 on our Rule 12(c) Motion for Judgment on the Pleadings. The court issued an order on June 19, 2019, stating that “judgment in Collegium’s favor is warranted under the doctrine of patent exhaustion to the extent Collegium’s alleged infringing activities resulted from sales that fall within the scope of that covenant.” Mr. Holdreith has handled jury verdicts of $34.7 million (St. Clair v. Canon); $25 million (St. Clair v. Sony) and $8 million (Personal Audio v. Apple), as well as defense wins including a summary judgement of non-infringement of ten patents (Auxilium v. Upsher Smith Labs) and denial of an injunction after a bench trial, which later resulted in invalidity of the asserted patent (Medicis Pharm. Corp. v Upsher-Smith Labs). Lead counsel for Virtual Radiologic Corporation and Nighthawk Radiology Services in Virtual Radiologic Corp. v. Tandem, an action for patent infringement, copyright infringement, misappropriation of trade secrets, breach of contract, and interference with contract in the District Court for the District of Arizona. We obtained injunctions in favor of our client on September 19, 2014, including a finding of patent infringement. The case involved our clients’ teleradiology technology and confidential business information. The action is civil action number 2:13-cv-01705. Lead trial counsel to lead defendant Novel Laboratories in Purdue Pharm. Prods. v. Actavis Elizabeth LLC et al, an 11-day Hatch-Waxman patent infringement trial before Judge Jose Linares of the Federal District Court in New Jersey. The case involved three patents related to zolpidem tartrate, the active ingredient in Intermezzo and Ambien. On March 27, 2015, Judge Linares issued an opinion determining that all of the asserted patents were invalid. Counsel to Quest Diagnostics in Mayo Collaborative Services LLC et al. vs Franklin R. Cockerill et al., case number 55-CV-14-6861, in the State District Court of Minnesota, Olmsted County, a matter filed by Mayo Clinic LLC against a former top Mayo executive involving claims of breach of fiduciary duty and trade secret. Lead defense counsel for Upsher-Smith Laboratories in Auxilium Pharmaceuticals v. Upsher-Smith Laboratories, a Hatch-Waxman patent infringement case in which we obtained a summary judgment of non-infringement of ten patents claiming a transdermal testosterone gel and method of treating hypogonadism before Judge Sue Robinson of the Federal District Court in Delaware. The opinion was filed on December 4, 2013. The technology related to claimed macrocyclic penetration enhancers for increasing the rate of passage of an androgen through the skin. We were successful in demonstrating to the Court that the case warranted an exception to the Court’s ordinary practice of declining to hear summary judgment motions in Hatch-Waxman cases. An appeal was dismissed on September 18, 2014, resulting in a final judgment of non-infringement for our client. Trial counsel in Personal Audio LLC v. Apple Inc., a patent infringement case in which a Texas federal jury awarded our client, Personal Audio LLC, $8 million in damages after finding that Apple’s iPods infringed our client’s patent for an audio player that can download or receive navigable playlists.  The verdict was announced on July 8, 2011. The court also awarded prejudgment interest in the amount of $4,182,331 for a total judgment of $12,182,331.  Lead defense counsel for Upsher-Smith Laboratories in a copyright, trade dress, and patent action concerning packaging for a pharmaceutical, and a related indemnification dispute. Resolved on confidential terms prior to significant litigation. Lead defense counsel to Tornier, Inc., in Nuvana Medical Innovations LLC v. Tornier, Inc., a patent infringement action filed in the Federal District Court in Delaware concerning the Aequalis Intramedullary Nail used for shoulder fractures. The action was resolved on confidential terms prior to significant litigation. Lead counsel for large beverage company in defense of a matter involving multiple patents. Resolved without litigation. Lead counsel for Upsher-Smith Laboratories in ongoing actions arising under the Hatch-Waxman Act. Counsel to a Requestor in an action naming the University of Texas at Austin under the Texas Public Information Act seeking disclosure of public records. Following several discovery motions and the depositions of records custodians, the matter was resolved by production of the requested records to our client. Lead trial counsel defending Upsher-Smith Laboratories in a patent suit to enjoin the sale of a pharmaceutical formulation. Following a two-day bench trial on the issues of infringement, validity and enforceability of the plaintiff's patent, the Court denied a request to temporarily enjoin the client from making and selling its products. All claims asserted against our client were subsequently invalidated during an ex parte re-examination based on the same arguments and evidence we presented during the bench trial. The invalidity of the claims was summarily affirmed on appeal to the CAFC. The district court action is Medicis Pharm. Corp. v. Upsher-Smith Labs., No. CV05-3458 (D. Az. filed October 27, 2005). The re-examination appeal is No. 2009-1291 (Reexamination No. 90/008,068). Trial counsel in St. Clair Intellectual Property Consultants, Inc. v. Canon, Inc. et al., No. 03-241 (D. Del., filed February 28, 2003) a case in which a federal jury in Wilmington, Delaware awarded Mr. Holdreith's client, St. Clair, $34.7 million after a finding that Canon infringed four patents relating to digital camera technology. The verdict was announced on October 8, 2004. Trial Counsel in St. Clair Intellectual Property Consultants, Inc. v. Fuji, Ltd. et al., No. 03-241 (D. Del., filed February 28, 2003) a case in which a federal jury in Wilmington, Delaware awarded Mr. Holdreith’s client, St. Clair, $3 million after a finding that Fuji infringed four patents relating to digital camera technology. The verdict was announced on October 25, 2004.  After a long and tortured post-trial history the verdict was reversed by the Federal Circuit on a claim construction issue. Trial counsel in St. Clair Intellectual Property Consultants, Inc. v. Sony Corp. et al., No. 01-557 (D. Del., filed Aug. 14, 2001) a case in which a federal jury in Wilmington, Delaware awarded his client, St. Clair, $25 million after a finding that Sony infringed four patents relating to digital camera technology. The verdict was announced on February 25, 2003. The parties entered into a license agreement two days later, the terms of which are confidential. Lead counsel in complex patent litigation in several jurisdictions, including cross claims for infringement of seven patents on surgical methods and devices. Matter was settled on confidential terms involving cross-licenses. Defended ev3, Inc. in an action brought by Boston Scientific Corporation and Boston Scientific Scimed, Inc. for misappropriation of trade secrets and infringement of patents related to medical devices known as embolic protection filters. Also represented ev3, Inc. in patent counterclaims against the Boston Scientific defendants involving embolic protection technology. Claims for misappropriation of trade secrets were dismissed in part. The patent claims and counterclaims were settled before trial on a confidential basis. Lead counsel for individual inventor and related small business in defense of an action by former employer seeking to gain control of our client’s subsequent invention and resulting business. The case was resolved prior to significant litigation through our successful motion on the plaintiff’s failure to join an indispensable party, resulting in a negotiated resolution of the claims. as announced on February 25, 2003. The parties entered into a license agreement two days later, the terms of which are confidential.

Special Licenses/Certifications

  • Also admitted in New York

Industry Groups

  • Health And Life Sciences
  • Technology

Comments

  • “ Very skilled and thoughtful attorney.”

These comments were made by fellow attorneys during the annual nomination process.

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Office Location for Jake M. Holdreith

800 LaSalle Avenue
Suite 2800
Minneapolis, MN 55402

Phone: 888-388-7261

Fax: 612-339-4181

Last Updated: 4/14/2021

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