Naikang Tsao

Partner

Overview

Naikang Tsao is a partner and litigation lawyer with Foley & Lardner LLP, where he has litigated a wide spectrum of matters, including patent, unfair trade practices, false advertising, and product liability matters. He represents clients in diverse industries, including banking, electronics and consumer products. His experience includes representing clients in patent infringement actions involving financial business transactions, computer software and hardware, industrial machines, and consumer products; and defending class-action lawsuits brought against consumer product manufacturers and retailers. He is a member of the Intellectual Property Litigation and Business Litigation & Dispute Resolution Practices, and is the Professional Responsibility Partner and former chair of the Litigation Department for the Madison office.

Before joining Foley, Naikang was a judicial clerk to the Honorable Ann Aldrich, federal district judge for the Northern District of Ohio, and was a trial attorney for five years at the U.S. Department of Justice, during which he was awarded the U.S. Environmental Protection Agency's Gold Medal for Exceptional Service, and  the U.S. Department of Justice's Special Commendation for Outstanding Service.

Representative Matters

  • Representing defendant Florida healthcare clinic in nationwide consumer class action alleging deceptive and unfair trade practices relating to its marketing and advertising of cellular treatments to address progressive lung diseases.
  • In 2019, represented defendant manufacturing company in patent infringement action involving appliance automation in the Southern District of Ohio. Obtained favorable settlement. 
  • In 2017 and 2018, represented defendant manufacturing company in eight patent, 71 claim infringement action brought by a Fortune 100 company in the Western District of Wisconsin. Obtained reduction in  number of asserted claims to 16. Filed motion for summary judgment as to non-infringement on all eight asserted patents. Case settled on favorable terms during summary judgment briefing.   
  • In 2018, represented petitioner manufacturing company in two inter partes review (IPR) proceedings involving insect detection devices and methods. Trial was instituted in both cases. Argued both cases at trial. PTAB invalidated all challenged claims in device patent. Obtained favorable settlement of district court litigation based on outcome in IPRs.
  • Represented plaintiff hunting apparel manufacturer as lead counsel in Lanham Act false advertising action against competitor. Obtained $3.4 million verdict after nine day jury trial in 2016. Trial court granted defendant’s motion for JMOL and, while plaintiff’s appeal of that decision was pending, defendant declared bankruptcy, and plaintiff acquired defendant’s assets out of bankruptcy. 
  • Represented defendant major manufacturing company as lead counsel in patent infringement lawsuit brought by competitor in the District of Minnesota, involving patents directed at methods for assessing the cleanliness of rooms. Case settled on the eve of trial.  
  • Lead counsel for major financial institution in patent infringement multidistrict litigation, In re Maxim Integrated Products, Inc., MDL No. 2345 (W.D. Pa.), involving four patents directed at mobile banking methods and applications. Co-argued at Markman claim construction hearing on behalf of 25 defendant joint defense group. Obtained favorable post-mediation settlement. 
  • Represented defendant Sconnie Nation in significant copyright infringement lawsuit brought by a photographer (Kienitz) who alleged that Sconnie had misappropriated his photograph of the Madison mayor. Foley filed a motion for summary judgment based on the fair use exception, which the district court granted. Kienitz v. Sconnie Nation LLC, 965 F. Supp. 2d 1042 (W.D. Wis. 2013).  Kienitz appealed. Argued Sconnie's position on appeal, and the 7th Circuit affirmed. Kienitz v. Sconnie Nation LLC, 766 F.3d 756 (7th Cir. 2014). 
  • Obtained global victory for hunting apparel manufacturer and national retailers as lead counsel in nine consumer class action lawsuits, which challenged defendants' advertising of carbon hunting clothing. Secured the dismissal of plaintiffs' conspiracy claim and certain defendants in the first-filed Buetow action, 564 F. Supp. 2d 1038 (D. Minn. 2008), and then the denial of class certification in all nine of the actions. See Buetow, 259 F.R.D. 187 (D. Minn. 2009); In re Activated Carbon-Based Hunting Clothing Marketing and Sales Practices Litigation, No. 09-md-2059, 2010 U.S. Dist. LEXIS 144548 (D. Minn. Sept. 29, 2010). The district court in Buetow granted plaintiffs' motion for summary judgment in part, and issued a permanent injunction against defendants. Buetow, 713 F. Supp. 2d 832 (D. Minn. 2010). Argued the defendants' appeal, convincing the 8th Circuit to: (a) vacate the injunction; (b) reverse the district court's summary judgment order; (c) reject plaintiffs' core allegation that defendants' use of the terms 'odor eliminating' and 'reactivation' was false; and (d) order the dismissal with prejudice of all claims for equitable relief. Buetow, 650 F.3d 1178 (8th Cir. 2011). On remand, the district court in Buetow granted defendants' motion to dismiss plaintiffs' individual damages claims and entered judgment in defendants' favor. Buetow, 2012 U.S. Dist. LEXIS 116041 (D. Minn. Aug. 17, 2012). Two days later, plaintiffs agreed to dismiss the eight other actions (pending in California, Florida, Illinois, Indiana, Maryland, Michigan, Minnesota and Wisconsin) with prejudice. In doing so, plaintiffs walked away from a significant investment: plaintiffs stated that they had incurred over 15,200 hours of attorney and paralegal time pursuing the actions.
  • Represented plaintiff farm equipment manufacturer (seller) in action to compel defendant buyer to attend arbitration to resolve disputes related to post-closing adjustments to asset purchase price. Case was sent to mediation twice and was resolved favorably through settlement.
  • Represented plaintiff healthcare system in patent litigation brought by client's patent licensee against a competitor in the Western District of Wisconsin. Case resulted in favorable jury verdict..
  • Represented audio/video technology company as lead counsel in patent infringement lawsuit in the Western District of Wisconsin. Obtained favorable settlement.
  • Represented major appliance manufacturer as lead counsel in patent litigation, Variant Inc. v. Flexsol Packaging Corp. (E.D. Tex.), involving patent directed at internet advertising methods. At the summary judgment stage, the action settled on favorable terms.
  • Represented major financial institution as lead counsel in multi-defendant patent infringement lawsuit, NextCard LLC v. American Express Co. (E.D. Tex.), involving patents directed to online methods for applying for credit cards. Case settled on favorable terms.
  • Represented plaintiff licensee in a patent license dispute with patent inventor and patent licensee, who alleged that plaintiff's license was terminated. On cross-motions for summary judgment, the district court ruled that plaintiff had underpaid royalties and was in breach of the license, but that defendants waived the right to terminate the license. After defendants appealed, plaintiff cross-appealed. The 7th Circuit agreed with plaintiff and reversed the district court's ruling on the contract interpretation issue, and remanded for further fact-finding to determine whether the termination of the license was wrongful. See EraGen Biosciences Inc. v. Nucleic Acids Licensing LLC, 540 F.3d 694 (7th Cir. 2008). On remand, the case settled, and plaintiff remained licensed under the patents.
  • Represented defendant hunting apparel manufacturer in patent license dispute brought by its patent licensee. The licensee failed to make a royalty payment due defendant, and then filed an action in the Western District of Michigan seeking a declaratory judgment that defendant's patents were invalid. Foley briefed and argued defendant's motion for a preliminary injunction to enforce the license and to enjoin the former licensee from selling licensed products. The district court granted defendant's motion and preliminarily enjoined the former licensee from manufacturing, selling or using the licensed products. Negotiated a favorable resolution of the action, under which the licensee paid all outstanding royalties, paid all of defendant's attorney's fees, and stipulated to the validity and enforceability of defendant's patents, as well as a permanent injunction.  
  • Represented plaintiff in this patent infringement action involving paper trimmer technology. Almost two years after the jury verdict in plaintiff's favor, defendant sought to vacate the damages award under Fed. R. Civ. P. 60, arguing that plaintiff was not entitled to lost profits damages because post-judgment sales data established that defendant's new product was a non-infringing alternative. The district court denied the motion, and defendant appealed. Argued plaintiff's position in the Federal Circuit, and the Federal Circuit affirmed.    
     

Education

  • New York University School of Law (J.D.)
    • Articles editor, New York University Law Review
    • Root-Tilden-Snow Scholar 
  • Northwestern University (B.A., with honors)

Admissions

  • Wisconsin
  • California
  • U.S. Supreme Court
  • U.S. Court of Appeals
    • 7th Circuit
    • 8th Circuit
    • 9th Circuit
    • 10th Circuit
  • District of Columbia
  • Federal Circuit
  • Numerous district courts including the Western and Eastern Districts of Wisconsin

Recognition

Naikang has been selected by his peers for inclusion in The Best Lawyers in America© since 2007 and has been named 2015 Madison Litigation – Intellectual Property "Lawyer of the Year," 2016 Madison Appellate Practice “Lawyer of the Year,” and 2017 Madison Litigation – Patent “Lawyer of the Year” by Best Lawyers®. He was also included in the 2006 to 2016 Wisconsin Super Lawyers® lists for his intellectual property litigation work. In 2003, he was recognized by the Western District of Wisconsin Bar Association for his pro bono work.