Hon. James M. Rosenbaum (Ret.)

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Intellectual Property

Hon. James M. Rosenbaum (Ret.) served as a United States District Judge for 25 years.  He had previously served 4 years as Minnesota’s United States Attorney. While Minnesota’s Chief Judge, he convened the committee which wrote Minnesota’s widely-cited patent and intellectual property rules. During his service, he carried patent calendars in Minnesota, and the Northern District of Illinois, as well as cases from the Southern District of New York, and Middle District of Florida. He has lectured throughout the United States, Europe, Asia, and the Middle East on patent, pirate software, and intellectual property issues.
 
The Judge frequently taught at the Sedona Conference’s Patent seminars, and taught patent law at ABA and Patent Law Association seminars.  He has been a featured presenter at the Federal Circuit Judicial Conference.  He has spoken on intellectual property issues before judges, traditional plaintiff’s groups, as well as medical and pharmaceutical manufacturers and their IP counsel.  The Federal Circuit favorably cited his innovative treatment of Markman issues, in Medtronic, Inc. v. Advanced Cardiovascular Systems, Inc., 248 F.3d 1303, 1308-09 (Fed. Cir. 2001).
 
He has tried dozens of patent cases running from high-tech medical and cardiac-regulating devices, to medical and surgical products, coronary stents, slaughterhouse disinfectants, plumbing devices, and in-store display devices.  He tried, and ultimately resolved, the case of West Publishing Co. v. Mead Data Central, Inc., which considered West Publishing Company’s claimed copyright on its “Reporter” System page numbers.  See West Pub. Co. v. Mead Data Central, Inc., 616 F. Supp. 1571 (D. Minn. 1985) (granting preliminary injunction and denying motion to dismiss).

Representative Matters

Since joining JAMS, he has mediated patent cases, covering medical device, electrical-generation, commercial baking, and business processes.
He has arbitrated cases involving patented medical devices and laser technologies. Judge Rosenbaum has engaged in multiple independent neutral evaluations of patents and patented technologies.

  • Patent owner for forced-air surgical warming blankets sued manufacturers of similar blankets.  Judge Rosenbaum granted summary judgment of invalidity and/or non-infringement on certain claims.  At trial, the jury found infringement of the remaining claims.  Both sides appealed.  The Federal Circuit affirmed the Judge’s claim construction and grant of summary judgment.  Augustine Medical, Inc. v. Gaymar Industries, Inc., 181 F.3d 1291 (Fed. Cir. 1999)
  • Patent infringement action concerning coronary stents.  After trial, but before submission to the jury,  Judge granted defendants’ motion for JMOL of non-infringement.  The Federal Circuit affirmed claim construction and JMOL.  Medtronic, Inc. v. Advanced Cardiovascular Systems, Inc., 248 F.3d 1303 (Fed. Cir. 2001)
  • Owner of patent on athletic-protective mouthpieces  sued competitor for patent infringement.  Judge Rosenbaum construed the disputed claims and granted a preliminary injunction.  EZ Gard Industries, Inc. v. XO Athletic Co., 2008 WL 1827490 (D. Minn.), aff’d, 302 Fed. Appx.920 (Fed Cir. 2008)
  • A mock-documentary motion picture, satirizing rural Minnesota beauty pageants, proposed to call the film “Dairy Queens.”  Dairy Queen trademark holder sued for trademark infringement and dilution.  Judge Rosenbaum granted a preliminary injunction.  American Dairy Queen Corporation v. New Line Productions, Inc., 35 F. Supp. 2d 727 (D. Minn. 1998)
  • Everybody remembers ‘Spanky,” the child star of the “Little Rascals” and “Our Gang” movies.  George “Spanky” McFarland claimed a St. Paul bar named “Spanky’s Saloon” misappropriated his name and likeness.  Judge Rosenbaum granted a permanent injunction, and entered summary judgment for plaintiff on his right-of-publicity claim.  George “Spanky” McFarland v. E & K Corp., 1991 WL 13728 (D. Minn. 1991)
  • Financial services businesses marketed investment advice using “Advantus,” a registered trademark.  Ten years later Aetna registered “Advantus” for health care-related services.  The USPTO granted Aetna’s registration. Financial services companies claimed infringement.  Judge Rosenbaum granted a preliminary injunction.  Advantus Capital Management v. Aetna, Inc., 2006 WL 2916840 (D. Minn. 2006)

 

Honors, Memberships, and Professional Activities

  • Member, Academy of Court Appointed Masters
  • Recognized as Best Lawyer, Alternative Dispute Resolution Category, Best Lawyers in America, 2014
  • Author, How Lawyers Benefit from Early Neutral Evaluation, Law360, April 2013
  • Honoree, Power 100 Advocate, On Being a Black Lawyer (OBABL), 2013
  • Recipient, Minnesota Lawyer’s Attorney of the Year Award for Outstanding Service to the Profession, Minnesota Lawyer, 2012
  • Designated one of “The 100 Most Influential Minnesota Lawyers of All Time, Minnesota Law & Politics, August 2007
  • Recipient, Hennepin County Judicial Professionalism Award, 2007
  • Recipient, Honorary Doctor of Law, Western New England College, 2007
  • Member, Federal Bar Association, Minnesota chapter, 1981-present (President, 1992-1993)
  • Board of Advisors, The Green Bag, 2008-present
  • Board of Directors, Hennepin Theater Trust, 2008-2013
  • University of Minnesota:
    • Alumnus of Notable Achievement, 2010
    • Alumni Association and Board of Advisors, 2009-present (Chairman 2012-2013)
    • English Department Advisory Committee, 2008-present
    • Law School Board of Visitors, 1991-1997
  • Judicial Board of Advisors, The Sedona Conference (a legal community think tank that examines forward-looking principles, best practices, and guidelines in specific areas of the law), 2004-present (taught programs on Antitrust, E-Discovery, Patent Law, Co-Author “Cooperation Proclamation”)
  • Founding member ["Master'], Minnesota's first Patent Law Inn of Court, 2014 
  • Frequent speaker and teacher, including:
    • Faculty Member, National Judicial College, Reno, Nevada, 1998-2006 (taught courses in complex litigation, legal technology)
    • Teacher at “Baby Judges School” (training and orientation for newly appointed federal judges), prosecutor and defender school, and Attorney General’s Advocacy Institute, 1990-present
    • Inaugural James M. Rosenbaum National Security Symposium: Trans-Atlantic Approaches to Counterterrorism, William Mitchell College of Law, April 2010
  • Select publications:
    • "Negotiating the Shoals of Mediation," 18 The Green Bag 2D 305 (2015)
    • “In Defense of Rule 808, Federal Rules of Evidence,” 12 Green Bag 2D 165 (2009)
    • “The Death of E-Discovery,” The Federal Lawyer 26, July 2007
    • “Rohwer v. Federal Cartridge Co.,” The Green Bag Almanac & Reader 316, 2006
    • “In Defense of the Sugar Bowl,” 9 Green Bag 2D, Autumn 2005
    • “In Defense of the Hard Drive,” 4 Green Bag 2D 169, 2001
    • “In Defense of the Delete Key,” 3 Green Bag 2D 393, 2000
    • Retiring the Gavel,” Minnesota Public Radio Audio Interview, July 6, 2010

Background and Education

  • Judge, U.S. District Court for the District of Minnesota, 1985-2010
  • U.S. Attorney, District of Minnesota, 1981-1985
  • Partner, Gainsley, Squier & Korsh, 1979-1981
  • Partner, Rosenbaum & Rosenbaum, 1977-1979
  • Associate, Katz, Tuabe, Lange & Frommelt, 1973-1977
  • Staff Attorney, Leadership Council for Metropolitan Communities, 1970-1972
  • Staff Attorney, VISTA, Chicago, Illinois, 1969-1970
  • J.D., University of Minnesota Law School, Minneapolis, MN, 1969
  • B.A., University of Minnesota, Minneapolis, MN, 1966

Disclaimer

This page is for general information purposes.  JAMS makes no representations or warranties regarding its accuracy or completeness.  Interested persons should conduct their own research regarding information on this website before deciding to use JAMS, including investigation and research of JAMS neutrals. See More

October 30, 2015
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