Timothy M. O'Shea

Tim is a skilled litigator who represents clients in all aspects of complex business litigation and intellectual property litigation in state and federal courts across the country and is the Chair of the firm’s E-Discovery Strategy & Advocacy Group.

Tim represents clients in litigation involving inventorship disputes, trade secret and non-compete disputes, patent infringement, trademark infringement, copyright disputes, contract disputes, antitrust litigation, business torts and technology-related claims, including failed software implementations. Tim provides practical legal advice that is aimed at helping clients accomplish their business goals. Tim has helped clients resolve many matters through negotiation, but he has also successfully taken cases through trial and appeal.

Tim has deep substantive knowledge in the constantly changing field of e-discovery that are critical to litigation and investigations. Tim is an experienced advisor regarding the preservation of evidence and helps clients formulate defensible and effective discovery plans that are aimed to reduce the costs of the review by leveraging technology assisted review and artificial intelligence (“AI”) tools to find relevant documents quicker and reduce the risk of inadvertent production of privileged or protected information. Tim counsels clients on a wide range of issues including ESI protocols, mobile device discovery, spoliation issues, complex privilege strategy, the use of AI, relevant legal authority surrounding AI, and the impact of AI on litigation. Tim has also advised clients on cross-border discovery issues and data privacy issues in litigation, including compliance with the Global Data Protection Regulation (“GDPR”) and other foreign data protection laws.

Tim has lectured and written extensively on e-discovery issues. Tim co-authored a chapter entitled “Privilege and Clawbacks: Considerations Regarding the Protection of Privileged ESI” for the Minnesota E-Discovery Deskbook. Tim is also a member of leading industry groups, including the Sedona Conference, the Electronic Discovery Institute and the Association of Certified E-Discovery Specialists.

Prior to joining Fredrikson, Tim was a law clerk for Judge Richard H. Kyle and Chief Magistrate Judge Arthur J. Boylan of the United States District Court for the District of Minnesota. Tim has also served as an adjunct instructor at the University of Minnesota Law School, teaching Law in Practice to first year law students.

Intellectual Property Litigation

• Represented Hormel Foods in Minnesota Federal Court in defeating a $62.3 million theft of trade secret and breach of contract claim over Hormel’s innovative and revolutionary new process for making a next generation of pre-cooked bacon Hormel markets under the brand Bacon1. After two years of litigation, Tim helped the client defeat each of the plaintiff’s claims on summary judgment. The Eighth Circuit Court of Appeals affirmed the victory in 2018. In addition, Tim helped the client recover nearly a million dollars in attorneys’ fees and costs for successfully defeating the plaintiff’s lawsuit.
• Represented Hormel Foods in Delaware Federal Court in defeating a patent infringement lawsuit related to its hybrid bacon cooking process technology, which was ultimately affirmed by the Federal Circuit in May 2020.
• Represented Hormel Foods in Delaware Federal Court in defeating claims that the president of a food equipment maker be added to a patent held by Hormel that covers a revolutionary new method for making precooked bacon. During the trial in March 2022, Tim helped the client defeat the claim that the president was the sole inventor of Hormel’s patent, but the court found that he was a joint inventor. Hormel appealed and in a precedential opinion issued by the Federal Circuit in May 2023, Tim was able to convince the three-judge panel to reverse the decision on joint inventorship, giving Hormel a complete trial victory.
• Represented a leading medical device company in a lawsuit against a competitor who began pilfering the client’s technical and sales personnel to gain its confidential information and introduce a competing device. Tim and the litigation team helped the client initiate an action for trade secret misappropriation and breach of certain employees’ employment agreements, among other claims. After a year of litigation, we obtained a temporary restraining order, a preliminary injunction, and ultimately achieved a very favorable settlement for the client.
• Represented a public company in an inventorship dispute that resulted in a favorable settlement for the client.
• Obtained a substantial settlement for a family-owned business in trade-secret litigation against a publicly-held company.

Commercial Litigation

• Represented H.B. Fuller in winning a $12.8 million arbitration award against Accenture in a dispute regarding a global ERP implementation. View Star Tribune article.
• Obtained a $59.4 million settlement for the City of New Brighton in a dispute with the Army. New Brighton vs. United States of America: 84-CV-1110 (D. Minn. January 2015). View Star Tribune article.
• Represented court-appointed receiver in recovery of $12 million for victims of Ponzi scheme operated by Minnesota Print Services, Inc.
• Obtained a favorable settlement for the purchaser of heavy construction equipment that was defective.

E-Discovery & AI Strategy

• Represented clients as discovery counsel in litigation and investigations.
• Assisted clients in the development of tailored preservation, collection and review strategies, including the use of AI and technology assisted review that reduced the burden and cost of e-discovery.
• Assisted clients in negotiating an effective ESI protocol that helped reduce the expense of e-discovery and minimized or eliminated the expensive motion practice on “discovery about discovery.”
• Represented clients at court appearances and have taken/defended depositions that address e-discovery matters.
• Assisted clients in addressing complex privilege questions and strategies concerning the voluminous review and logging of privileged documents.
• Counseled clients on cross-border data transfers, data collection and processing.
• Helped clients address data privacy issues in litigation and develop strategy to avoid the inadvertent production of personally identifiable information.
• Assisted clients in addressing complex spoliation issues.

Education

• University of Illinois Chicago School of Law, J.D., cum laude
• Loyola University of Chicago, B.B.A.
• Loyola University of Chicago, John Felice Rome Center, Rome, Italy

Admissions

• Minnesota
• Washington (inactive)
• Illinois (inactive)
• U.S. District Court for the District of Minnesota
• U.S. Court of Appeals for the Eighth Circuit
• U.S. Court of Appeals for the Federal Circuit
• U.S. Supreme Court

Clerkships

• Judicial Law Clerk, Honorable Richard H. Kyle, U.S. District Court for the District of Minnesota, 2007-2008
• Judicial Law Clerk, Honorable Arthur J. Boylan, Chief Magistrate, U.S. District Court for the District of Minnesota, 2006-2007
• Judicial Extern, Honorable Ronald A. Guzman, U.S. District Court for the Northern District of Illinois, 2005

• Certification: Generative AI for the Legal Profession, University of California, Berkeley Law Executive Education, 2024
• Certified E-Discovery Specialist, Association of Certified E-Discovery Specialists (this specialty is not accredited or recognized by the bars of Minnesota, Illinois and Washington)
• Minnesota Super Lawyers Rising Star, Intellectual Property Litigation, 2015-2017
• Attorney of the Year, Minnesota Lawyer, 2015
• North Star Lawyer, Minnesota State Bar Association, 2013-2015
• Graduate, Intensive Trial Skills Program, National Institute for Trial Advocacy, 2012
• Contributing Attorney on Team Awarded Transaction of the Year, Turnaround Management Association-Upper Midwest Chapter, 2011

Professional Activities

• Federal Bar Association (Minnesota Chapter), Chair of IP Practice Group, 2012-2013
• Federal Bar Association (Minnesota Chapter), Communications Committee
• Minnesota Bar Association
• University of Minnesota Law School, Adjunct Instructor, Law in Practice
• University of Illinois Chicago Law Review