Blogs, Commentary & News

U.S. News and Best Lawyers Ranks Klarquist Sparkman Among the Nation’s Top Law Firms for 2017

11/01/2016

Klarquist Sparkman, LLP was recognized as one of the nation’s “Best Law Firms” by U.S. News and Best Lawyers in its 2017 “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.

Klarquist Files Brief of SAP America, J.C. Penney Company, and Samsung Electronics as Amici Curiae in Federal Circuit Case on Section 101 Preemption: McRO, Inc. v. Bandai Namco Games America

10/26/2016

One facet of the Section 101 patent-eligibility analysis looks at preemption. The preemption analysis goes back decades to Supreme Court jurisprudence and excludes from patentable subject matter a claim that recites an abstract idea that preempts substantially all uses of that idea in the claim’s technical field.

This Amici brief, filed October 26, 2016, seeks full-court review of McRO to avoid confusion arising from the McRO decision, specifically on the meaning and role of “preemption” in a Section 101 patent-eligibility analysis. The panel held that the claims were directed to using particular “mathematical rules.” It approved the claims primarily because they did not preempt “alternative discoveries” or “alternative rules-based methods.”

Amici argue that the standard “preemption” analysis does not ask about “alternatives”; the standard “preemption” analysis asks whether these claims foreclose (preempt) substantially all uses (implementations), in this technical field, of the specific mathematical algorithm they claim — not alternatives to that idea. “Instead of asking whether the public can use the claim’s idea without infringing the claim, the panel asked whether the public could find some alternative idea to use. This entirely different test clothed in the same standard ‘preemption’ label is bound to confuse judges and examiners.”

Link to the Brief.

Federal Circuit Affirms Another Mentor Graphics Win Over Synopsys Logic Translation Patents

10/17/2016

On October 17, in a precedential opinion, the Federal Circuit affirmed summary judgment granted by Judge Maxine M. Chesney, USDC, Northern District of California, invalidating under Section 101 claims of three Synopsys, Inc. patents.

The claims are directed to “the abstract idea of: translating a functional description of a logic circuit into a hardware component description of the logic circuit.” Judge Chen (with Judges Lourie and Moore on the panel) agreed with the trial court that the claimed translation methods “can be performed mentally or with pencil and paper,” as the named inventors confirmed when they “admitted to performing the steps mentally themselves.”

While the claimed translation technique was designed for use by computers, the asserted claims require no computer or other hardware. Again, this was conceded as “none of Synopsys’ proposed constructions required the use of a computer or any type of hardware,” and Synopsys’ counsel stated at the summary judgment argument that “computers aren’t called out” in the representative patent claim.

The panel dismissed the alleged novelty of the claimed translation technique because “a claim for a new abstract idea is still an abstract idea.” Similarly, it is irrelevant that the claimed translation technique differed from how a human logic-circuit designer would translate such a description, as the Supreme Court in Gottschalk v. Benson faced the same situation and rejected the claims nonetheless.

Finally, the panel noted what was not before it: patent claims directed to a computerized design tool.

A week earlier, on October 11, another Federal Circuit panel affirmed a PTAB decision finding obvious claims of another Synopsys synthesis patent. Synopsys had asserted that patent against Mentor Graphics in the same N.D. Cal. lawsuit before Judge Chesney.

Mentor Graphics was represented in these actions by Kristin L. Cleveland, Salumeh R. Loesch, Jeffrey S. Love, Andrew M. Mason and John D. Vandenberg of Klarquist Sparkman, LLP; Mark E. Miller and George A. Riley of O’Melveny & Myers LLP; and Tom Evans of Mentor Graphics Corporation. Synopsys, Inc. was represented by Philip W. Woo, Patricia Thayer, and Carter Glasgow Phillips of Sidley Austin LLP.

Link to Decision.

The case was also the subject of a Law360 article on October 17, 2016 (Law360 subscribers can access the article here).

Klarquist Files Amici Brief in Supreme Court on Patent Venue Law

10/14/2016

Klarquist recently filed an amici brief on behalf of four of the country’s most prominent financial services member organizations in support of a certiorari petition seeking Supreme Court review of patent venue law. The companies are asking the Supreme Court to follow its longstanding precedent limiting where patent suits may be filed and reject the Federal Circuit’s contrary, permissive interpretation. They argue that the Supreme Court’s interpretation of the patent venue statute advances core public policies of the patent system.

The Federal Circuit’s contrary, permissive approach has led to an explosion of filings in the Eastern District of Texas, where cases are far less likely to be stayed pending Patent Office review proceedings and far less likely to lead to invalidation of improperly granted patents. More than 40% of patent lawsuits today are filed in the Eastern District of Texas. This undermines core policies of the patent statute, including strict scrutiny of government granted monopolies.

The case is TC Heartland LLC d/b/a Heartland Food Products Group v. Kraft Food Groups Brand LLC. The four amici are American Bankers Association, The Clearing House, Financial Services Roundtable and Consumer Bankers Association. They are represented by Klaus H. Hamm and John D. Vandenberg.

Link to the Brief.

Klarquist Secures Federal Circuit Win For Mentor Graphics

10/11/2016

On October 11, the Federal Circuit affirmed a PTAB decision finding Synopsys Inc. memory synthesis patent claims obvious. Synopsys had alleged infringement of the claims by Mentor Graphics Corporation, as part of a lawsuit filed late 2012 in N.D. Cal. The Court stayed that part of the case when the PTAB granted Mentor’s petition for IPR in mid-2014. Before the PTAB, Mentor won a final written decision finding all challenged claims unpatentable as obvious.

On appeal to the Federal Circuit, Synopsys argued that the PTAB decision lacked adequate findings and that substantial evidence did not support the finding of obviousness. Mentor responded that Synopsys had waived many of the arguments presented on appeal and highlighted expert testimony supporting the determination of obviousness.

The Federal Circuit panel consisted of Judges Newman, Dyk, and Clevenger.

Klarquist’s Andrew M. Mason argued on behalf of Mentor at the Federal Circuit. Other team members before the Federal Circuit and the PTAB included Jeffrey S. Love and John D. Vandenberg.

View the Federal Circuit Decision Rule 36 Opinion.

Klarquist Life Sciences Group Receives High Rankings From Juristat

10/10/2016

Klarquist Sparkman has been ranked among the Top Firms for Life Sciences Patents by Juristat, an intellectual property consulting firm. Klarquist ranked 4th nationwide for its success in obtaining patents for Life Science clients. Only 10 US firms were recognized, each of which had at least 100 patent applications that reached a final disposition in the relevant technology centers during the one-year period following the Myriad Supreme Court decision. The Myriad and Mayo decisions have made it significantly more difficult to obtain patents on life-sciences inventions, and have made patent prosecution in the life sciences practice groups (technology center 1600) at the USPTO more challenging. Juristat’s Top Firms for Life Sciences Patents list were ranked by their average allowance rates in technology center 1600. Klarquist’s high ranking demonstrates the firm’s expertise in prosecuting life science patents during a challenging time. “Our success demonstrates Klarquist’s expertise in advising clients, understanding the technology landscape, and efficiently working with patent examiners to advance the client’s case,” said Dr. William Noonan, who heads the firm’s Life Sciences Group. Click here to view the full Juristat report.

Klarquist was the only firm based in the Pacific Northwest to be ranked on the list of Top Firms for Life Sciences Patents. Klarquist is one of the largest intellectual property law firms in the Pacific Northwest, with more than 50 attorneys and patent agents. Eleven members of the firm’s Life Sciences Group hold either M.D.’s or Ph.D.’s in a range of science and technology fields, and many have also worked in or directed research laboratories. The firm handles patent matters for research institutions, universities, and large and small corporations located in the U.S. and throughout the world. The firm’s clients include biotechnology, chemical, medical device, software companies and research laboratories, such as Amazon.com, Inc., Centers for Disease Control and Prevention, Emory University, National Institutes of Health, University of Pittsburgh, Microsoft, GE Healthcare, Mentor Graphics, TriQuint Semiconductors, Salk Institute for Biological Studies, and Ventana Medical Systems, Inc.

For additional information please contact Dr. William D. Noonan at (503) 595-5300 or william.noonan@klarquist.com.

New Patent Trial and Appeal Board Bar Association Launched

10/03/2016

Klarquist is pleased to be a founding member of the PTAB Bar Association. The PTAB Bar Association is a collaboration of about 45 law firms that is dedicated to preserving and promoting the highest professional and ethical standards among lawyers and stakeholders who appear before the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office. The PTAB Bar Association officially launched on September 16, 2016, five years after the America Invents Act (AIA) went into effect and four years from the date on which the first IPR petitions were filed. The Inaugural Annual Conference of the PTAB Bar Association will take place March 1 & 2, 2017 in Washington, D.C.

Klarquist has extensive experience challenging and defending patents in post-grant proceedings, and has filed numerous inter partes review and “covered business method” petitions. Klarquist also closely monitors PTAB decisions and maintains a blog on PTAB related issues. For more information on the PTAB Bar Association or its annual conference, please visit www.PTABBar.org. To speak with an attorney regarding Klarquist’s PTAB practice, please contact Joseph T. Jakubek or Todd M. Siegel.

U.S. Food and Drug Administration Awarded 2016 Patents for Humanity Award for Drugs and Vaccines

10/03/2016

The U.S. Food and Drug Administration (FDA) was recently awarded the United States Patent and Trademark Office’s 2016 Patents For Humanity award for their work developing an improved meningitis vaccine production process. The patented technology has led to the MenAfriVac® vaccine, and more than 235 million people in Africa’s high-risk meningitis belt have been immunized with it since 2010. Unlike previous vaccines, the new technology created by the FDA raised the vaccine production yield from 20% to 60% and enabled the vaccine to last up to four days without refrigeration. The FDA has licensed the technology to the Meningitis Vaccine Program (MVP) and hosted production scientists from MVP’s Indian manufacturer to teach them how to use the vaccine production technology.

Only four cases of meningitis A were reported in 2013 in the immunized region covering 16 countries. In 2015, the World Health Organization recommended that MenAfriVac® be introduced in routine immunization schedules in sub-Saharan Africa. This will ensure that infants are protected against meningitis and will maintain population-wide immunity.

The Life Sciences team at Klarquist, led by William D. Noonan, M.D., works with the FDA to manage their patent portfolio. Wayne Rupert and Susan Graf, Ph.D. successfully prosecuted patent applications for the FDA’s Polysaccharide-Protein Conjugate Vaccine invention that led to the MenAfriVac® vaccine.

Klarquist Celebrates 75th Anniversary

08/26/2016

Klarquist is proud to celebrate its 75th anniversary today. Our firm was founded by solo practitioner, Elmer A. Buckhorn, who logged the firm’s first patent matter on August 26, 1941. By 1947, business had increased enough that a second partner, Orme Cheatham, joined the firm, and by the end of the 1950s the firm had five partners, including Kenneth Klarquist and Joseph Sparkman, for whom the firm is currently named.

Today, the firm includes a combination of more than fifty attorneys and patent agents having a broad range of technical expertise and legal experience in all facets of intellectual property acquisition, licensing, and litigation. Klarquist’s professional staff of attorneys and patent agents hail from diverse backgrounds and are distinguished by the deep technical knowledge they bring to each of the firm’s practice and technology areas. Many of our professionals hold advanced degrees and bring industry experience to their work from the private and public sectors.

Klarquist represents a broad range of clients, from solo inventors to mid-size companies to some of the largest, most prestigious companies in the world. Some clients have been with our firm for more than half a century. Our current clients include Amazon, Centers for Disease Control and Prevention, General Electric Company, Los Alamos National Security, Mentor Graphics, Microsoft, National Institutes of Health, Nautilus, Nikon, Oregon Health & Science University, Oregon State University, Taylor Made Golf Company, Turner Broadcasting Systems, Inc., University of Arizona, University of Oregon, University of Pittsburgh, and Ventana Medical Systems, Inc.

From the beginning, our firm has sought to always act with candor and integrity, valuing client success and relationships above any short-term gains. The firm always seeks to creatively apply technical knowledge and legal expertise to meet each client’s IP needs. These values are still carried on today, and we believe this is what largely attributes to our success over the years. Klarquist is proud of its long history, and we’re looking ahead to our next 75 years as a leading intellectual property law firm – serving our national and international clients in intellectual property matters as diverse as the human imagination.

Klarquist Attorneys Included in the 2017 Best Lawyers in America® List

08/15/2016

Klarquist is proud to have six attorneys named to the 2017 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. In addition, Mr. Klitzke was recognized as the Patent Law “Lawyer of the Year” in Portland, OR.

Best Lawyers® compiles its lists of attorneys by conducting peer-review surveys in which thousands of leading lawyers confidentially evaluate their professional peers. Only a single lawyer in each practice area and in each community surveyed is selected as a Lawyer of the Year. The Best Lawyers in America® can be found online at www.bestlawyers.com.