Terry Newby is a partner in Maslon's Litigation Group and focuses his practice on intellectual property, e-commerce, and complex commercial litigation matters. He has extensive IP litigation experience, successfully representing clients in state and federal courts throughout the country in a broad range of infringement matters involving patent, trademark, copyright, and trade dress as well as licensing disputes. Terry has also represented clients in complex commercial litigation matters, including insurance disputes, civil RICO claims, breach of contract claims, and class actions.

Terry regularly helps clients navigate complex e-commerce matters. He evaluates software and license agreements, and he drafts and negotiates software licenses as well as confidentiality and non-disclosure agreements—all to ensure the client achieves optimal value from the venture.

Terry has significant appellate experience and has briefed and/or argued appeals involving complex commercial disputes and patents in various jurisdictions including the Federal Circuit Court of Appeals and appellate courts in Minnesota, Iowa, and Illinois. He is also licensed to appear before the United States Supreme Court.

Selected Experience

Representative Cases

  • Lead counsel for client in patent infringement case venued in Texas federal court. Case settled in 2015 on terms favorable to client.
  • Lead counsel for client in defense of lawsuit involving eight separate intellectual property licenses. Case was tried to an arbitrator in Minnesota, resulting in a favorable arbitration ruling in favor of the client. The arbitration award was upheld on appeal.
  • Lead counsel for clients in numerous contract and license negotiations. Represented clients in negotiations with licensors and licensees involving trademarks, license rights, patents, and confidentiality agreements.
  • Lead trial counsel for client in defense of patent infringement allegations. Client was sued in California federal district court in 2011 for patent infringement. Case was litigated for over a year in the Central District of California, with numerous fact and expert depositions and discovery. Negotiated a favorable settlement on behalf of client two days before the scheduled start of trial.
  • Lead counsel for client in patent infringement case venued in South Carolina federal district court. Case was litigated for almost three years before the parties settled in 2007 on terms favorable to the client. Defendant continues to pay royalties to client.
  • Represented client in patent infringement case venued in Texas federal court. Case was litigated for two years, with significant fact and expert discovery, numerous depositions, and extensive Markman briefing. Markman briefing led to a favorable summary judgment ruling, which led to a favorable settlement in 2007. Defendant continues to pay royalties to client.

Representative Published Decisions

  • Tamarack Village Shopping Center v. Galyan’s Trading Co., Inc., 2006 WL 224180 (Minn. Ct. App. 2006) (commercial lease dispute)
  • Barkema v. Williams Pipeline Co., 666 N.W.2d 612 (Iowa 2003) (class action)
  • Mars, Inc. v. Heritage Builders of Effingham, Inc., 763 N.E.2d 428 (Ill. App. Ct. 2002) (case of first impression regarding the economic loss doctrine)
  • Gordon v. Microsoft Corp., 645 N.W.2d 393 (Minn. 2002) (class action)

Professional Activities

Minnesota State Bar Association: Legal Services Advisory Committee
2001-2004
Hennepin County Bar Association
Ramsey County Bar Association
Southern Minnesota Regional Legal Services: Board Member 2005-present, First Vice President 2015
William Mitchell College of Law: Adjunct Professor, Legal Writing and Advocacy 2009-2010

Pro Bono Activities

Volunteer Lawyers Network: Volunteer
Southern Minnesota Regional Legal Services: Volunteer

Recognition

Faculty of the Year Award, William Mitchell College of Law, 2009-2010

Pro Bono Attorney of the Year, Minnesota Legal Services Coalition, 1999 (Award for "extraordinary service" in providing fair access to justice.)

Adult Achiever Recognition, YMCA of St. Paul Black Achievers Program (Responsible for preparation of materials and coordinating annual Mock Trial program for inner city youth of St. Paul from 1997-2000.)

p 612.672.8328   f 612.642.8328
3300 Wells Fargo Center, 90 South Seventh Street
Minneapolis, MN 55402
Bar Admissions
Minnesota, 1995
U.S. District Court
  • Minnesota, 1996
  • E.D. Michigan, 2016
  • E.D. Wisconsin, 1998
U.S. Court of Appeals
  • Eighth Circuit, 1998
  • Federal Circuit, 2003
U.S. Supreme Court, 2007
Education
William Mitchell College of Law
J.D., 1995
University of Wisconsin, Madison B.A., 1989
Languages
  • French
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