About

Law Practice

Over the last 25 years Karl has developed an approach that combines the traditional aspects of an intellectual property practice with the business focus of a corporate practice.

The intellectual property portion of his practice includes developing global portfolio management strategies, conducting infringement assessments, and overseeing IP litigation. Representative technical areas in which he has obtained considerable experience include orthopedic devices, spinal implants, physical therapy products, computer disk drives, software, nano-scale abrasive processing technology, chip-scale electrical connectors, optical systems, micro-electro-mechanical systems (MEMS) and micro-optical-electro-mechanical systems (MOEMS), window and door technology, and outdoor and hunting products.

Karl’s business focus includes managing the intellectual property aspects of various types of M&A transactions, from mergers, stock and asset based transactions to divestitures, and leveraged buyouts. He has represented buyers, sellers, management, venture capital investors, lenders, and other participants in public and private transactions.

Karl also has experience in advising clients and in negotiating technology agreements and other transactions in numerous industries and structures involving joint ventures and strategic partnerships, outsourcing, services, technology licensing, manufacturing, supply, distribution, and joint development. His work in this area includes complex arrangements involving Target Corporation, General Mills, Tornier, Inc., Pella Corporation, Disc Dynamics, Inc., Bemis Company, Split Rock Capital, and Affinity Capital.

Before starting Three Lab IP, Karl was a partner at Stoel Rives LLP (2008-2015), a partner at Faegre & Benson (1998-2008), as well as several patent boutique firms (1990-1998), including Merchant & Gould.

  • Professional Honors & Activities Hennepin County District Ethics Committee, 1997-2001
  • List in Best Lawyers in America, 2014 and 2015

Articles

  • “The Repair and Reconstruction Doctrine: Fuji Photo Film and Its Legacy,” Midwest IP Institute, Fall 2005
  • “The Inter-American Convention on Taking Evidence Abroad: A Functional Comparison with the Hague Convention,” N.Y. International Revue, 4, 69, 1991

Representative Work

IP Due Diligence in Mergers, Acquisitions and Divestitures

  • Represented Tornier, Inc. in its acquisition of C2M Medical, Inc.
  • Represented Surmodics, Inc. in its acquisition of BioFX Laboratories, Inc.
  • Represented Tornier, Inc. in its acquisition of Orthovert, Inc.
  • Represented Pella Corporation in its acquisition of EFCO Corporation
  • Represented the Saunders Group, Inc. in its sale to Encore Medical, Inc.
  • Represented Tornier, Inc. in its acquisition of Nexa Orthopedics, Inc.
  • Represented Pella Corporation in its acquisition of Moulding Associates, Inc.
  • Represented Pella Corporation in its divestiture of storm door division
  • Represented Digi International Inc. in its $49 million acquisition of Rabbit Semiconductor Inc. of Davis, California
  • Represented Bemis Company, Inc. in its purchase of security packaging equipment and related assets from Rayton Packaging, Inc. of Calgary, Alberta
  • Represented Jasc Software, Inc. in its sale to Corel Corporation
  • Represented Bemis Company, Inc. in its proposed $420 million sale of worldwide pressure sensitive business to UPM-Kymmene, Oyj of Helsinki, Finland (transaction terminated due to a preliminary injunction obtained by Antitrust Division of U.S. Department of Justice)
  • Represented SPS Commerce, Inc. in its acquisition of fourthchannel, inc.
  • Represented Silicon Graphics, Inc. in the divestiture of a division involving hundreds of patents and software products

IP Due Diligence in Financings

  • Represented Disc Dynamics, Inc. in a private equity financing
  • Represented St. Paul Venture Capital LLC in a private equity financing of Anulex Technologies, Inc.
  • Represented St. Paul Venture Capital LLC in a private equity financing of Disc Dynamics, Inc.
  • Represented Crescendo Ventures in its investment in Xebeo Communications, Inc.

Speaking Engagements

  • “IP in Complex Corporate Transactions – Negotiating Representations and Warranties,” Minnesota CLE, 2005
  • “Intellectual Property Due Diligence in Merger and Acquisition Transactions,” Faegre & Benson Intellectual Property Seminar, 2002
  • “Intellectual Property Issues Facing the Medical Technology Industry,” Faegre & Benson Intellectual Property Seminar, 2002
  • “Designing Around U.S. Patents,” Faegre & Benson Intellectual Property Seminar, 1998
  • “Intellectual Property Issues in Structuring, Maintaining & Disputing Employment Relationships,” Minnesota Institute of Legal Education, 1996
  • “Novelty and Inventive Step: What Do They Really Mean?” American Intellectual Property Law Society – Basic Biotech/Chem Patent Seminar, 1996
  • “GATT Filing Strategies for the Patent Practitioner,” Minnesota Intellectual Property Association, 1995
  • “New Patent Strategies Under GATT,” selected clients, 1995