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Shane Delsman

Shareholder
Milwaukee
414.287.9653414.287.9653
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  • Biography
  • Representative Experience
  • Admissions, Activities & Honors
  • Updates, News & Presentations
  • Education

Shane Delsman is a shareholder in the Intellectual Property and Technology & Digital Business Practice Groups in the firm’s Milwaukee office. Shane is a registered patent attorney and focuses his intellectual property law practice on litigation, M&A and licensing transactions and prosecution.

Shane has served as counsel on numerous patent, trademark, copyright, trade secret and unfair competition lawsuits in jurisdictions throughout the country. Such matters have included cases relating to agricultural equipment, color trademarks, radio frequency electronics and encryption, military vehicles and software. He also has experience successfully representing clients in contested matters before the United States Trademark Trial and Appeal Board and Patent Trial and Appeal Board.

Shane also regularly supports clients through mergers, acquisitions, divestitures and development and licensing transactions, including performing due diligence and negotiating and drafting agreements as well as conducting freedom to operate and patentability opinions.

Shane has prosecuted and obtained domestic and international patents, trademarks and copyrights for his clients. He has experience managing large intellectual property portfolios and crafting intellectual property strategies to develop portfolios.

In addition, Shane has significant experience in Internet law and authored the Internet law chapter of the Commercial & Consumer Transactions in Wisconsin treatise. Shane’s Internet law experience includes drafting terms of use and privacy policies, negotiating SaaS and EULA agreements and representing clients in Uniform Domain-Name Dispute-Resolution proceedings.

Prior to joining Godfrey & Kahn, Shane practiced law in Chicago at a large intellectual property law firm.

Representative Experience

Representative Contested Proceedings Experience

American Orthodontics Corp. v. Dentsply Int’l Inc. (PTAB 2018). Represented petitioner to invalidate all claims of an asserted patent related to orthodontic appliances. All claims held unpatentable. IPR2016-01652.

Life Techs. Corp v. Promega Corp. (2017). Filed an Amicus Brief on behalf of the Wisconsin Alumni Research Foundation with the United States Supreme Court.

R.D. Jones, Stop Experts, Inc. et al. v. Traffic & Parking Control Co. Inc. (M.D. Fla. 2016). Represented defendant in a patent infringement action involving lighted roadway signs. Settlement was reached.

Ruehl et al. v. AM General LLC (N.D. Ind. 2014)(Fed. Cl. 2015). Representing the plaintiffs in a patent infringement action involving military vehicles. Case is currently pending.

Delta Education, LLC v. Geneva Area Recreational, Educational and Athletic Trust (T.T.A.B. 2012­­­­-2014). Represented the petitioner in an opposition proceeding. Settlement was reached resulting in a narrowing amendment to the identification of services.

ARI Network Services, Inc. v. Nichols et al. (E.D. Wis. 2013). Represented the plaintiff in a copyright infringement action involving various powersport equipment taxonomies. Settlement was reached.

Transcenic, Inc. v. Google, Inc., Microsoft Corp., AOL Inc. & Mapquest, Inc. (D. Del. 2011). Represented the plaintiff in a patent infringement action involving spatially referenced street-level imagery for web mapping applications. Settlement was reached.

Chamberlain Group, Inc. v. GMI Holdings, Inc. and Overhead Door Corp. (N.D. Ill. 2011). Represented the plaintiff in a patent infringement action involving obstruction-sensing systems for garage doors. Settlement was reached.

Chamberlain Group, Inc. v. Decko Products, a division of Michel Sales Company and Guardian Access Corporation (N.D. Ill. 2010). Represented the plaintiff in a patent infringement action involving garage door positioning systems. Settlement was reached.

Deere & Company v. Great Plains Manufacturing, Inc. (S.D. Iowa 2010). Represented the plaintiff in a patent infringement action involving the design of agricultural seed tubes. Settlement was reached.

Deere & Company v. Bush Hog, LLC and Great Plains Manufacturing, Inc. (S.D. Iowa 2009). Representing the plaintiff in a patent infringement action involving the design of pull-behind rotary cutters. Case is pending.

McDavid Knee Guard, Inc. et al. v. Nike USA, Inc. (N.D. Ill. 2008). Represented the plaintiff in a patent infringement action related to protective athletic apparel.

WMH Tool Group, Inc. v. Woodstock International, Inc. and Grizzly Industrial, Inc. (N.D. Ill. 2007). Represented the plaintiff in a trade dress infringement action related to color in woodworking and metalworking tools. Settlement was reached.

Representative M&A Experience

Represented ARI Network Services, Inc. (NASDAQ:  ARIS) (Milwaukee, Wisconsin) in its purchase of the assets of Auction 123 Inc. (Weston, Florida).

Represented Landec Corporation in its acquisition of O Olive Oil.

Represented Hufcor, Inc. (Janesville, Wisconsin) in the sale of the company to OpenGate Capital (Los Angeles, California).

Represented ARI Network Services, Inc. (NASDAQ:  ARIS) (Milwaukee, Wisconsin) in its purchase of the assets of Direct Communications, Incorporated (Des Moines, Iowa).

Represented Brass Ring Capital (Milwaukee, Wisconsin) in its acquisition of Creative Learning Systems (Longmont, Colorado).

Represented Prairie Capital Fund VI (Chicago, Illinois) in its investment in BOTE, LLC (Destin, Florida).

Represented Mason Wells Buyout Fund IV (Milwaukee, Wisconsin) in its investment in L.B. White (Onalaska, Wisconsin).

Represented ARI Network Services (NASDAQ: ARIS) (Wisconsin) in sale of shares of common stock and warrants to institutional and accredited investors in a private placement.

Representative Procurement Experience

Manages a number of international portfolios of patents, trademarks and applications including for clients in the fishing, powersport and marine industries.

Significant experience with expedited patent application processes before the United States Patent and Trademark Office.

Successfully appealed final rejections of claims before the United States Patent and Trademark Office.

Experience with diverse technologies including computer, electrical, electro-mechanical, software, wireless signals, hand and power tools, marine, firearms and archery, exercise and bicycling, and automotive and motorcycle sectors.

Admitted To Practice

Illinois

Wisconsin

United States Patent and Trademark Office

Court Admissions

United States Court of Appeals, Federal Circuit
United States Court of Federal Claims
United States District Court, Northern District of Illinois
United States District Court, Eastern District of Wisconsin
United States District Court, Western District of Wisconsin
United States Supreme Court

Professional Associations

American Bar Association
Eastern District of Wisconsin Bar Association
Richard Linn America Inn of Court
State Bar of Wisconsin
Wisconsin Intellectual Property Law Association

Activities

Wisconsin Intellectual Property Law Association – President (formerly Secretary/Treasurer, President Elect)

Eastern District of Wisconsin Bar Association – Membership Committee Member, former Civil Committee Member

American Bar Association

Intellectual Property Section – Editorial Board (Issue Editor for Landslide Magazine)
Trademark Litigation Committee – Co-Vice Chair
Patent Litigation Committee – Claim Construction Co-Chair
Intellectual Property Law Section – CLE Board
Intellectual Property and Internet Law Committee of the Young Lawyer Division – Past Chair

In 2016, the Intellectual Property Law Section of the American Bar Association adopted three policies introduced by Shane addressing the circuit splits as to the standard of review for likelihood of dilution, standard of review for likelihood of confusion and the test for nominative fair.

Schlitz Audubon Nature Center – Board Member

Manitowoc County Bar Association – Intellectual Property Primer

Chicago Bar Association – Past Intellectual Property Law Committee Chair

Honors

Awarded the ABA IPL Recognition of Outstanding Leadership Contribution (2015, 2017)

Recognized as a Wisconsin Rising Star (2015 - present)

Recognized as an Illinois Rising Star (2013)

Iron Cross Recipient (2003)

AV Preeminent® Peer Review Rated by Martindale-Hubbell®

Presentations

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Education

Juris Doctor, University of Wisconsin Law School, 2007

Bachelor of Science, University of Wisconsin-Madison, 2003

Milwaukee
833 East Michigan Street
Suite 1800
Milwaukee, WI
53202-5615
414.287.9653414.287.9653
414.273.5198414.273.5198
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Renee Deering
414.287.9535414.287.9535
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