Blogs, Commentary & News

Klarquist Receives Top Tier Ranking from Chambers USA


Klarquist has received a top tier ranking from Chambers USA for 2017. Klarquist is recognized as one of two top tier intellectual property law firms in Oregon. In addition, three Klarquist attorneys, Scott E. Davis, William D. Noonan, M.D., and John D. Vandenberg, received individual recognition for intellectual property.

Sources say:

You feel safe when a case is in their hands. They always perform, and they’re basically beyond compare with anyone else I have worked with in the country.”

“I love the firm. With every attorney I have worked with, I’ve had nothing but good experiences, and the people are quite impressive.

Read what Chambers USA and some of our clients said about us here.

27-Year Expansive Patent Venue Reign Ends


The Supreme Court ruled 8-0 that a domestic corporation’s residence — for purposes of the special federal “venue” statute governing where parties may be sued for patent infringement — is only its State of incorporation. The Court had so ruled 60 years ago, but the Court of Appeals for the Federal Circuit later ruled in 1990 that the earlier decision was no longer controlling. Today, the Supreme Court disagreed. The Court ruled in a short opinion, in effect, that Congress had done nothing to change the Court’s 1957 interpretation of “residence” in this statute.

This ruling will be felt most strongly in the Eastern District of Texas, where approximately 40% of all patent infringement lawsuits have been filed in recent years under the Federal Circuit’s expansive view of venue in patent lawsuits.

But it will not end all uncertainty concerning “venue” in patent lawsuits. Courts now will be asked to decide disputes over the second prong of the patent venue statute:  “Any civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” There are many older decisions on where a company has a “regular and established place of business,” and those will be dusted off and litigated in the months and years ahead.

In the Supreme Court, Klarquist filed an amici brief on behalf of four of the country’s most prominent financial services member organizations, asking the Court to rule as it today ruled. See link to the brief.

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 decision.

Patent Agent Patrick C. Cesarano Joins Klarquist Sparkman, LLP


Klarquist Sparkman is pleased to announce that patent agent Patrick C. Cesarano has joined the firm.

Mr. Cesarano has prepared and prosecuted patent applications related to highly technical applications focused on electrical engineering, wireless technology, and computer hardware and software. He has extensive experience advising tech companies and government entities across several different technology areas, including electrical engineering and device physics fields, computer and information systems architecture and integration, cellular and wireless technology, RF engineering, and security systems architecture. Prior to joining Klarquist, Mr. Cesarano gained more than 15 years of industrial experience in electrical engineering designing technological applications for such clients as Lockheed Martin, NASA, and Oleson Microwave.

Cesarano received his M.S. with highest honors in Electrical Engineering from the California Institute of Technology. He received his B.S. in Electrical Engineering, as well as a B.S. with distinction in Physics, from the University of Virginia.

Klarquist Obtains Summary Judgment Win for SunModo in Patent Infringement Suit


SunModo Corporation prevailed on summary judgment in a patent infringement suit brought by D Three Enterprises. D Three had alleged infringement of three patents relating to roof mount assemblies that can be used for solar panels.

Klarquist argued invalidity of all of the 30+ asserted claims. On March 15, Judge Craig B. Shaffer ruled that D Three’s asserted claims were invalid since they were not entitled to the earliest asserted effective filing date under 35 U.S.C. §§ 112 and 120. D Three did not dispute that the claims were invalid in view of intervening prior art if not entitled to the earliest possible effective filing date of a provisional patent application.

Klarquist attorney Scott E. Davis argued on behalf of SunModo at the Colorado District Court. Todd M. Siegel also represented SunModo in this matter. View Judge Shaffer’s memorandum opinion and order.

Klarquist Recognized for Obtaining One of the Highest Jury Verdicts in California


Klarquist was recently recognized by for obtaining one of the top 50 highest jury verdicts in 2016 in California. It also was the highest verdict for a false advertising or Lanham Act claim.

On June 21, 2016, a jury in the Central District of California found CYME (a division of Eaton Corporation, represented by Jones Day) liable for making false claims about the performance of ETAP’s software. The jury awarded Klarquist’s client, ETAP, $8.42 million in damages, and found that CYME willfully engaged in false advertising. ETAP had been the victim of a three-year, worldwide smear campaign that started in June 2013. The campaign consisted of YouTube videos and emails distributed throughout the power system software industry. ETAP filed suit in June 2014, won summary judgment in March 2016 that the accused statements were literally false, and got a verdict that CYME is directly liable and responsible for the actions of its representative. The Klarquist team was led by Kristin L. ClevelandSalumeh R. LoeschKlaus H. Hamm, and John D. Vandenberg.

To see the full list of the Top 50 Verdicts in California for 2016, click here.

Attorneys Ryan Andexer Farmer and Justin Foster Join Klarquist Sparkman, LLP


Klarquist Sparkman is pleased to announce that attorneys Ryan Andexer Farmer and Justin Foster have joined the firm.

Mr. Farmer focuses his practice on the preparation and prosecution of patent applications. Prior to joining Klarquist, he practiced civil litigation and was a software engineer specializing in database development, GUIs, and technology related to business logic systems. Mr. Farmer received his J.D. from the Lewis & Clark School of Law. He received his B.S. in computer science and B.A. in mathematics from Southern Methodist University.

Mr. Foster focuses his practice on intellectual property litigation, as well as the preparation and prosecution of patent applications. Prior to joining Klarquist, Mr. Foster served as General Counsel to an engineering research and development firm and prosecuted patents both as an attorney and as a patent examiner for the United States Patent & Trademark Office. Mr. Foster received his J.D. from Northwestern University Law School and his M.S. and B.S. in electrical engineering from the University of Illinois at Urbana – Champaign.

Klarquist Files Amici Brief in Supreme Court TC Heartland Case on Patent Venue Law


Klarquist recently filed an amici brief on behalf of four of the country’s most prominent financial services member organizations in a Supreme Court case involving patent venue law that will be argued this spring. The organizations 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 is governing law that must be followed and that it 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. Approximately 40% of patent lawsuits today are filed in the Eastern District of Texas.

The case is TC Heartland LLC d/b/a Heartland Food Products Group v. Kraft Food Groups Brand LLC. Oral argument is scheduled for March 27. 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.

Lauer Quoted in Law360 Article Regarding AIA Estoppel Provision


Klarquist Partner Deakin Lauer was quoted in a January 26 Law360 article titled “AIA Estoppel Provision Not As Restricted As Many Expected.” The article discussed the America Invents Act’s inter partes review estoppel provision, which limits arguments to those seeking to invalidate patent claims that can be raised following PTAB review. The estoppel provision was originally viewed as a significant limitation on the arguments petitioners could raise in litigation following an inter partes review decision. Lauer commented on how recent rulings allowing invalidity arguments to be used later in litigation are transforming the interpretation of this provision.

Law360 subscribers can access the full article here.  A discussion of IPR estoppel can also be found on Klarquist’s PTAB Blog.

Patent Agent Elaine Morlock Joins Klarquist Sparkman, LLP


Klarquist Sparkman is pleased to announce that patent agent Elaine V. Morlock, Ph.D., has joined the firm.

Dr. Morlock has prepared and prosecuted patent applications covering biotechnology and pharmaceutical technologies including diagnostic methods, pharmaceutical compositions and excipients, immune therapies, antibody therapeutics, and metabolic engineering. Prior to joining Klarquist, Dr. Morlock was a patent agent at Mintz Levin, where she counseled clients and inventors regarding technology and patent processes, performed patentability and freedom to operate searches, and evaluated intellectual property portfolios for financing and licensing opportunities.

Morlock received her Ph.D. in Molecular and Cellular Pharmacology from University of Wisconsin, Madison, and her B.S. in Molecular and Cellular Biology from Cal Poly, San Luis Obispo.

Klarquist and Attorneys Named Among World’s Leading Trademark Professionals for 2017


Klarquist has been ranked as one of the top trademark law firms in Oregon in the 2017 edition of World Trademark Review’s WTR 1000: The World’s Leading Trademark Professionals. Lisa M. Caldwell, Ramon A. Klitzke II, and Richard J. Polley also received individual recognition for being top individuals in their practice.

According to World Trademark Review, “Klarquist Sparkman delivers a pre-eminent full trademark service with very accommodating billing rates. It has a great IP reputation in Oregon and deals with big-ticket litigation; however, its prosecution practice is also a hub of strategic counselling excellence.”