Thomas Miller Photo

Thomas A. Miller

Partner

Overview

Tom specializes in building large intellectual property portfolios that advance his clients’ business strategies, protect their investments in research and development, and enhance their competitive position in the marketplace. A trusted advisor to his clients, he is highly responsive and valued for his thoughtful, practical, and business-savvy insight.

Tom represents companies in heavy equipment manufacturing, financial services, and the software-as-a-service (SaaS) sector, with a particular focus on the protection of machine-control systems and software. He has a reputation for successfully handling subject-matter and prior-art rejections of software-related applications issued by the U.S. Patent and Trademark Office, and is currently involved in developing strategies for overcoming such rejections following the U.S. Supreme Court’s Alice Corporation ruling.

 

He also manages intellectual property due diligence for major corporate acquisitions and sales. He has a wealth of experience evaluating intellectual property assets included in transactions to assess their strategic value, their ability to be integrated into existing product lines, and their potential for opening new areas of business for his clients.

Tom routinely assists his clients by identifying and analyzing intellectual property threats from competitors and taking action to defend against them. He offers counsel and renders opinions on infringement and validity issues and provides advice on the design of products to maximize their intellectual property value and avoid infringing on competitors’ patent portfolios.

A former engineer with Hewlett-Packard Company, Tom has a technical background and experience that includes electrical, mechanical, computer, software, and biomedical technologies.

Prior to being elected to the firm’s Management Committee, Tom served as the Chair of the firm’s Intellectual Property Practice Group, managing a group of over 100 attorneys and agents across all of the offices of the firm.

Experience

Overseeing an IP portfolio expanded through acquisition

Tom has managed the intellectual property due diligence efforts for numerous transactions made by Joy Global Inc., a company that manufactures and services heavy machinery used in the mining industry. Recent examples include the $1.1 billion acquisition of LeTourneau Technologies, Inc. from Rowan Companies, Inc.; the $375 million sale of the LeTourneau Technologies Drilling Products business to Cameron, Inc.; the $46.95 million (Canadian) dollar acquisition of Mining Technologies International Inc.; and the $123 million acquisition of Montabert S.A.S. from Doosan Holding France S.A.S.

Building a large IP portfolio

As counsel for Textura Corporation, a developer of construction management software, Tom managed the creation and rapid growth of the company’s intellectual property portfolio. Identifying key aspects of Textura technology to patent, he helped build a portfolio of 44 issued U.S. and foreign patents, and 138 U.S. and foreign trademark registrations.  

In addition, Tom helped guide Textura through its IPO in 2013, explaining its intellectual property position in presentations to investors and investment bankers. The IPO was successfully completed, raising approximately $75M for the Company.

Honors & Recognitions

  • Peer Review Rated as AV® Preeminent™, the highest performance rating in Martindale-Hubbell's peer review rating system
  • The Best Lawyers in America®, Intellectual Property Law, 2009-present
  • The Best Lawyers in America®, "Lawyer of the Year", Milwaukee Trademark Law, 2013

Professional Activities

  • Chair, Lex Mundi Intellectual Property Practice Group
  • Member, State Bar of Wisconsin
  • Member, American Bar Association
  • Member, Milwaukee Bar Association
  • Member, Wisconsin Intellectual Property Law Association
  • Member, American Intellectual Property Law Association
  • Member, Institute of Electrical and Electronics Engineers

Education

Admissions

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