Terry Newby has extensive experience assisting clients with their intellectual property, e-commerce, and complex commercial litigation needs. He has successfully represented 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. In addition, Terry has taken intellectual property matters to trial, including federal jury trials in patent infringement, trademark infringement, and false advertising cases under the Lanham Act. His clients include software companies, consumer products companies, e-commerce and emerging technology companies, and medical device companies.
With a relentless focus on practical solutions to difficult problems, Terry regularly helps his clients navigate complex intellectual property matters. He devotes a large part of his practice to proactively drafting IP licenses and contracts so his clients can avoid litigation. Sometimes, however, the best solution is to litigate, and in those instances Terry has the litigation and trial experience necessary to protect his client's intellectual property. Terry also evaluates and drafts software and license agreements as well as confidentiality and non-disclosure agreements—all to ensure his clients achieve optimal value from their ventures.
Terry has significant appellate experience and has briefed and 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. Counseling clients and providing practical, common sense solutions are the core of Terry's practice.
When not practicing law, Terry writes fiction, including novels and plays. One of his plays, "The Cage," was professionally staged in St. Paul in 2016.
Representative Jury Trial Cases
Other Notable Intellectual Property Cases
- GTT v. Emtrac, et. al, U.S. District Court, District of Minnesota. Trial counsel for defendants in a patent infringement case. Case was tried before a jury in 2013.
- National Products, Inc. v. Gamber Johnson, U.S. District Court, Western District of Washington. Trial counsel for defendants in a false advertising case under the Lanham Act. Case was tried before a jury in 2010.
- Carpad, Inc. v. Brookstone, Inc., U.S. District Court, District of Nevada. Trial counsel for defendants in a trademark infringement case under the Lanham Act. Case was tried before a jury in 2003.
Representative Published Decisions
- B-50 v. InfoSync, U.S. District Court, Northern District of Texas. Lead trial counsel for plaintiff in a patent infringement case venued in Texas federal court. Case settled in 2015 on terms favorable to client.
- Ian LeBauer v. Bracketron, Inc., private arbitration matter. Lead trial counsel for defendant in a lawsuit involving eight separate intellectual property licenses. Case was tried to an arbitrator in Minnesota in 2012, resulting in a favorable arbitration ruling in favor of the client. The arbitration award was upheld on appeal.
- Piao Shang, Ltd. v. Bracketron, Inc., U.S. District Court, Central District of California. Lead trial counsel for defendant in a patent infringement case. Client was sued in California federal district court in 2011. 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.
- B-50 v. Monolith, LLC, U.S. District Court, District of South Carolina. Lead trial counsel for plaintiff in a 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.
- B-50 v. XFormity, LLC, U.S. District Court, Northern District of Texas. Lead trial counsel for plaintiff in a 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.
- 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)
Professor 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.)