Blogs, Commentary & News

Klarquist Sparkman LLP Files U.S. Supreme Court Brief for 51 Computer Scientists as Amici Curiae in Support of Microsoft In United States v. Microsoft Corporation, No. 17-2


Today, more than a billion people around the world trust American “cloud” service providers such as Amazon, Google, IBM, and Microsoft to safeguard their private emails and other data in hundreds of high-security datacenters. This new paradigm combines the highest data security with nearly instantaneous data access from anywhere in the world.

That worldwide access has led the U.S. Government to assert that a statute permits it to order American “cloud” service providers, via a court-approved search warrant, to gather and hand over to the Government the private e-mails of customers whose e-mails are stored in a datacenter in any foreign country, despite the normal presumption against extraterritorial effect of U.S. laws. The Government has argued (1) the American company can access those emails without taking any actions in that foreign country, (2) the American company could store all e-mails outside the U.S. and defeat U.S. law enforcement needs, and (3) the emails can be accessed from anywhere and moved anywhere so they in effect have no specific location.

This issue is now before the U.S. Supreme Court, set for oral argument on February 27, because Microsoft disagreed that the statute gave the Government such control over foreign-stored data, and refused to hand over e-mails stored in its datacenter in Dublin, Ireland.

On January 17, 2018, Klarquist Sparkman LLP filed on behalf of 51 Computer Scientists an amicus curiae brief in support of Microsoft to explain to the Justices the science and engineering behind “cloud” data storage and access. The computer scientists explain the following salient points:

  1. The data is at a specific physical location: While the “cloud” allows the owner of personal data to access her data from Internet-connected computers throughout the world, and to do so without being aware of the location of the data, the data is always stored in at least one specific location: an electronic pattern of digital 0s and 1s on a spinning disk, or similar storage device, in a computer in a datacenter.
  2. Retrieving data from Ireland requires complex physical actions in Ireland: Retrieving data stored on a spinning computer disk, or similar device, in a high-security datacenter in Ireland requires myriad complex physical actions in Ireland.
  3. The data is protected in a digital “safe deposit box”: The owner’s personal data is made more secure in a “cloud” datacenter than on most home computers. This includes being shielded, by encryption, from employees of the datacenter to an even greater extent than personal papers in a safe deposit box in a bank vault are protected from a bank’s employees. The owner’s personal data also is protected in transit to and from the datacenter in a digital equivalent to an armored truck—again by means of encryption.
  4. The closer the data, the faster the access: Geography matters, as the data owner’s rapid access to her personal data is faster if the data is stored at the “cloud” service provider’s nearest regional datacenter.

Link to the brief.

Klarquist Sparkman, LLP Announces Two New Partners


Klarquist Sparkman, LLP is pleased to announce that Susan W. Graf, Ph.D., and Gregory K. Scott, Ph.D., have been named its newest partners effective January 2018.

Susan W. Graf, Ph.D., specializes in biotechnical and medical patent applications, with a focus on the preparation and prosecution of U.S., international, and foreign patent applications. Dr. Graf also prepares legal opinions, including patentability, invalidity, infringement/non-infringement, and freedom-to-operate opinions. She has extensive research experience in the fields of cell and molecular biology, biochemistry, and genetics, including clinical diagnostics. Additionally, Dr. Graf prepares and prosecutes trademark applications. Dr. Graf received her J.D., summa cum laude, from Lewis and Clark College of Law and her Ph.D. in Cell Biology from Duke University.

Gregory K. Scott, Ph.D., prepares and prosecutes U.S., foreign, and international patent applications. Dr. Scott’s practice emphasis is in biotechnology, including applications relating to biochemistry, molecular genetics, virology, immunology, neurobiology, pharmaceuticals, cellular imaging, and bioinformatics. Additionally, Dr. Scott advises clients about patentability, inventorship, freedom-to-operate, and strategic product development. Dr. Scott received his J.D., cum laude, from Lewis and Clark College of Law and his Ph.D. in Neuroscience from OHSU.

Klarquist Wins Permanent Injunction and $3.8 million for Clients OmniGen and Prince Agri Products


Klarquist obtained a permanent injunction and $3.8 million at the U.S. District Court of Oregon for clients OmniGen Research and parent company Prince Agri Products in a suit for trade secret theft and other claims against a former employee and his spouse. After their earlier success on a motion for terminating sanctions due to evidence destruction, Klarquist prevailed at a remedies trial by obtaining a permanent injunction against defendants Yongqiang Wang, Yan Zheng, and their rival businesses used for selling knock-offs of OmniGen’s feed additives in China. The permanent injunction prohibits Wang and Zheng from further violations and future involvement with the rival businesses Bioshen and Mirigen. The Court also ordered the defendants to pay $3.8 million in damages and attorneys’ fees and costs for claims including breach of contract, trade secret misappropriation, intentional interference with economic relations, copyright infringement, breach of fiduciary duty, and false advertising. Following the October trial, the Court praised Klarquist attorneys Klaus H. Hamm and Scott E. Davis for their presentation and organization.

View Judge McShane’s November 16, 2017, Findings of Fact and Conclusion of Law.

U.S. News and Best Lawyers Rank Klarquist Sparkman Among the Nation’s Top Law Firms for 2018


Klarquist Sparkman, LLP was recognized as one of the nation’s “Best Law Firms” by U.S. News and Best Lawyers in its 2018 “Best Law Firms” survey.

Klarquist received metropolitan first-tier rankings in the following practice areas:  Litigation – Intellectual Property; Litigation – Patent; Patent Law; and Trademark Law.

The rankings are based on an evaluation process that involves collecting client and attorney evaluations, peer reviews from leading attorneys in their field and review of additional information provided by law firms. Respondents were asked to rate firms based on expertise, responsiveness, understanding of a business and its needs, cost-effectiveness, civility and whether they would refer another client to the firm. All of the feedback is combined to create an overall score for each firm.

SAP America, Nautilus, and Others Brief Supreme Court in Support of Constitutionality of Inter Partes Review


Varied companies and trade associations joined today as Amici in the U.S. Supreme Court in support of the “inter partes review” procedure for reexamining patents and canceling ones that were issued in error, in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, No. 16-712 . The software company SAP America, Inc. was joined by companies in the biopharma, semiconductor, and fitness equipment fields, and trade associations for financial services and electronic transactions products.

Reexamining patents for errors by the Patent Office has been a job for the Patent Office since 1980. In 1980, Congress authorized the Patent Office to reexamine issued patents to make sure they were not granted in error. The Patent Office has reexamined patents more than 10,000 times since then. While the procedures differ, inter partes reviews are substantively identical to reexaminations. They apply the exact same law on the exact same issues and result in the exact same certificates canceling, amending, adding, or confirming patent claims. Since 1980, patent applicants have consented to such substantive reexamination of the patents they seek as a condition for maintaining the patent. This does not violate the Constitution. On the contrary, imposing such an on-demand maintenance condition on patents implements the Constitutional authority to grant patents “for limited Times” to promote “the useful Arts.”

The Court will hear argument on November 27. Klarquist attorneys Andrew M. Mason and John D. Vandenberg are on the brief.

Link to the brief.

Attorney Alexa Johnson and Patent Agent Jie Lian, Ph.D., Join Klarquist


Klarquist Sparkman is pleased to announce that attorney Alexa Johnson and patent agent Jie Lian, Ph.D., have joined the firm. Both professionals started their careers at Klarquist as summer associates.

Ms. Johnson’s practice includes all areas of intellectual property law, with a focus on the preparation and prosecution of U.S. and foreign patent applications. Her areas of expertise include biotechnology, medical devices, and chemical and mechanical engineering. Prior to joining Klarquist, Ms. Johnson was a patent department extern at NASA’s Glenn Research Center and a process engineering intern at Arclin and E. & J. Gallo Winery. She completed her B.S. in Bioengineering at Oregon State University, and recently earned her J.D., magna cum laude, from Case Western Reserve University.

Dr. Lian’s practice focuses on the preparation and prosecution of U.S., international, and foreign patent applications, and performing patentability and prior art searches. His expertise is in medical devices, mobile health, signal/image processing, and wearable technology, and he specializes in signal processing, statistical analysis, physiological modeling, and algorithm development for embedded systems. He has published three book chapters and more than seventy peer-reviewed research articles, and has served as an expert reviewer for more than a dozen scientific journals. Dr. Lian is the recipient of more than forty issued or pending U.S. patents and dozens of European patents. He earned his Ph.D. in Bioengineering from the University of Illinois at Chicago, as well as an M.B.A. in Healthcare Management from a joint program between Oregon Health & Science University and Portland State University. He received his M.S. and B.S. in Biomedical Engineering from Zhejiang University in China, and is currently enrolled at Lewis & Clark Law School.

Klarquist Ranked Among Top 10 Firms for Overcoming § 101 Rejections


Klarquist Sparkman has been ranked among the Top Firms for Handling Mayo/Myriad Rejections by Juristat, an intellectual property consulting firm. Since the Supreme Court decisions of Mayo, Myriad, and Alice, the percentage of § 101 rejections made in biotech, pharma, and other life sciences applications have been steadily rising. According to Juristat, the percentage of these patent applications that encounter § 101 rejections have increased from 4.9% in 2012 to 15.7% today, with about 37% of these rejections occurring in Technology Center 1600, which handles the bulk of the applications in these technologies.

Compared to other firms, Klarquist has done remarkably well overcoming Mayo/Myriad rejections according to Juristat’s findings. Klarquist was the only firm based in the Pacific Northwest to be ranked among the top 10 firms. To be eligible for inclusion, each firm must have had a minimum of 50 disposed applications with at least one § 101 rejection that cited either Mayo or Myriad. Click here to view the full Juristat report.

Attorney Liliana Di Nola-Baron, Ph.D., Joins Klarquist


Klarquist Sparkman is pleased to announce that attorney Liliana Di Nola-Baron, Ph.D., has joined the firm.

Dr. Di Nola-Baron’s practice focuses on the preparation and prosecution of U.S., international, and foreign patent applications. She also prepares patentability, invalidity, infringement, and freedom-to-operate opinions. Dr. Di Nola-Baron has expertise in biotechnology, including pharmaceuticals, small molecule drugs, polymer applications, cosmetics, medical treatments and devices, immunology, biochemistry, gene therapy, food science, and agriculture. Prior to joining Klarquist, Dr. Di Nola-Baron was employed as a patent attorney and patent agent at firms in the United States and Israel. She was also employed as patent examiner at the U.S. Patent & Trademark Office. As a research scientist, Dr. Di Nola-Baron completed post-doctoral research in molecular biology at the U.S. Department of Agriculture and in immunology at the U.S. Food & Drug Administration. She also completed a stage as biochemist at the Université P. et M. Curie in Paris, France.

Dr. Di Nola-Baron received her J.D. from George Washington University, and her Ph.D. in Biochemistry, M.Sc. with Distinction in Botany, and B.Sc., cum laude, in Agriculture, from the Hebrew University of Jerusalem in Israel.

Klarquist Attorneys Included in the 2018 Best Lawyers in America® List


Klarquist is proud to have six attorneys named to the 2018 Best Lawyers in America® list: Lisa M. Caldwell in the area of Trademark Law; James E. Geringer in the areas of IP Litigation, Patent Litigation, and Trademark Law; Ramon A. Klitzke II in the areas of Patent Law and Trademark Law; William D. Noonan, M.D. in the area of Patent Law; Stacey C. Slater in the area of Patent Law; and John D. Vandenberg in the areas of IP Litigation and Patent Litigation.

Best Lawyers® compiles its lists of attorneys by conducting peer-review surveys in which thousands of leading lawyers confidentially evaluate their professional peers. The Best Lawyers in America® can be found online at

Klarquist Hosts USPTO Examiners’ Portland SEE Program Visit


Last week, Klarquist hosted 11 examiners from the USPTO’s Art Unit 1600 as they visited innovative companies in the Portland area. The examiners were visiting Portland as part of their Site Experience Education (SEE) program, in which they learned about the various chemical and biotech technologies used by Portland-area companies. The examiners visited AgonOx, Agrinos, Intel, NIKE, OHSU, Phylos Bioscience, the Portland Business Accelerator, Portland State University, Providence Cancer Center, and Ubivac. Klarquist also hosted a happy hour reception for the examiners that was attended by members of the biotech and chemical community from all over Oregon. The event gave the examiners the opportunity to meet with companies to better understand some of the issues of their industries. The USPTO examiners’ SEE trip to Portland was coordinated by Susan Alpert Siegel. The examiners’ visit only helped reinforce what we already knew- that Portland is an amazing place to live, and we are fortunate to be a part of such strong scientific and business community.