Klarquist’s professional staff of attorneys and patent agents hail from diverse backgrounds, and have deep and broad legal and industry experience.
Intellectual Property Counseling, Patents: Design, International and Utility, Post-Grant USPTO Proceedings
Mr. Bible’s practice focuses on the preparation and prosecution of both U.S. and foreign patent and trademark applications. His practice also involves counseling clients on patent infringement and validity issues.
Mr. Bible’s practice emphasizes electrical-, computer-, and physics-related fields.
Law clerk to Justice Robert E. Rose of the Nevada Supreme Court, 1999 – 2001.
Dr. Burgess is a patent agent skilled in all aspects of chemistry. Dr. Burgess has more than 15 years of industrial experience in synthetic organic and medicinal chemistry including designing, synthesizing, and optimizing novel antimalarial and antibacterial drugs.
Senior Scientist | 2008 – 2013
Designed and synthesized novel antimalarial and antibacterial drugs. Project manager for the preclinical testing of the lead RCQ candidate.
Portland State University
Research/Teaching Assistant | 2003 – 2008
Dissertation title: Design and synthesis of antimalarial drugs based on a chloroquine scaffold.
Scientist | 2001 – 2003
Team Leader | 1999 – 2001
Senior Chemist | 1995 – 1999
Chemist | 1992 – 1995
Designed and synthesized screening libraries, and synthetic intermediates, and managed custom synthesis projects.
Intellectual Property Counseling, Licensing and Technology Transfer, Outsourced "In-House" IP Counsel, Patents: Design, International and Utility, Startups & Emerging Businesses, Trademarks
Ms. Caldwell practices all aspects of intellectual property law focusing on patent procurement, IP licensing and preparation of patent infringement/validity opinions. Her practice also focuses on trademark procurement and enforcement, including licensing and opposition and cancellation proceedings.
Ms. Caldwell’s patent practice has an emphasis on preparation and prosecution of patent applications in the chemical, mechanical, and microelectronics fields. Her practice includes patent prosecution in a variety of technical areas such as semiconductor processing and devices, pharmaceuticals, food science, mechanical and pulp/paper technologies, as well as other technical fields involving inorganic and organic chemistry.
Oregon Department of Justice
Court Certified Law Clerk | 1992 – 1993
Civil Enforcement Division, representing state in various hearings, judgment debtor exams, and statutory injunction proceedings; preparation of legal memoranda, discovery requests, pleadings, responses, affidavits, and motions.
Chemist | 1991 – 1994
Researching, developing, and practicing methodologies for analyses of soils, air, and water inorganic and organic toxics for environmental impact studies.
Fujitsu Microelectronics, Inc.
Chemist | 1989 – 1991
Responsible for developing and practicing methodologies for quality control/quality assurance of liquid, solid, and vapor chemical process media used for computer chip fabrication. Evaluated/solved chip fabrication chemical process issues.
Nuclear Environmental Analysis, Inc.
Chemist | 1985 – 1989
Responsible for method development, analysis, and reporting of soil, air, and water environmental contaminants.
University of California, Lawrence Livermore National Laboratory
Research Chemist Hazards Control Department | 1982 – 1984
Litigation, Outsourced "In-House" IP Counsel, Trademarks
Since 1995, Mr. Carraway has focused his practice exclusively on intellectual property litigation, representing such clients as Microsoft, SAP, eBay, LinkedIn, and NBC in patent litigation in federal courts nationwide. Mr. Carraway has particular experience litigating patents involving computer software, computer hardware, video game technology, and e-commerce. He has argued at numerous claim construction and summary judgment hearings and Federal Circuit appeals. Prior to entering private practice, Mr. Carraway served as a law clerk to the Hon. William C. Bryson of the U.S. Court of Appeals for the Federal Circuit. Some of the federal courts where Mr. Carraway has recently litigated include California (Northern and Central Districts), Colorado, Delaware, Massachusetts, New York (Southern District), Oregon, Texas (Eastern and Western Districts), Virginia (Eastern District), and Washington (Western District).
Michael Best & Friedrich, LLP
Associate | 1996 – 1999
Law clerk to the Honorable William C. Bryson of the United States Court of Appeals for the Federal Circuit | 1995 – 1996
Over the last few years, Chris has served as lead counsel on the following patent litigation cases (represented party underlined):
Patents: International and Utility
Mr. Cesarano is a patent agent with expertise in patent prosecution specializing in highly technical applications focused on electrical engineering, wireless technology, and computer hardware and software. Mr. Cesarano has more than 15 years of industrial experience in electrical engineering designing technological applications for such clients as Lockheed Martin, NASA, and Oleson Microwave.
Mr. Cesarano 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. His technical expertise primarily focuses on computer hardware-, software-, and electrical engineering-related technologies.
Ms. Cleveland’s practice focuses on intellectual property litigation. She has extensive experience handling disputes for clients, from obtaining favorable results in early motion practice, to efficient management of cases through discovery, claim construction, summary judgment and trial. Ms. Cleveland has experience in several federal district courts, around the country, and has argued at the Federal Circuit. Ms. Cleveland has also served as the firm’s managing partner.
Cases on which Kristin has acted as counsel include the following (represented party underlined):
Prior to joining the firm, Ms. Cleveland was in the Washington D.C. office of Arnold & Porter where she worked on a variety of litigations including intellectual property, products liability, and civil and criminal antitrust.
Chair, AIPLA Patent Litigation Committee’s Damages Subcommittee
Publication Staff, AIPLA Quarterly Journal, 1995 – 1996
Patents: International and Utility
Dr. Connolly prepares and prosecutes U.S., international, and foreign patent applications. Dr. Connolly also performs prior art searches and assists in the preparation of patentability opinions.
Dr. Connolly’s expertise includes many areas of biotechnology, including virology, immunology, vaccines, oncology, monoclonal antibodies, molecular biology, genetics, biochemistry, gene therapy, RNA interference, and antisense technology.
Isis Pharmaceuticals, Inc.
Senior Patent Agent | 2003 – 2007
Responsibilities included managing patent portfolios in the field of antisense technology and preparing and prosecuting U.S. and international patent applications.
Fish and Richardson, P.C.
Patent Agent | 2003
Practice emphasized patent prosecution in biotechnology, including gene therapy, molecular biology, biochemistry, virology, immunology, and medical devices.
Heller Ehrman White and McAuliffe, LLP
Scientific Advisor/Patent Agent | 2002 – 2003
Practice emphasized patent prosecution in biotechnology, including gene therapy, molecular biology, biochemistry, virology, immunology, and medical devices.
The Scripps Research Institute
Research Associate | 2001 – 2002
Studies focused on the interaction of adenovirus with cellular factors involved in the host innate immune response in order to better design an adenoviral gene therapy vector.
Vanderbilt University Medical Center
Graduate Student and Postdoctoral Research Fellow | 1996 – 2001
Research focused on elucidating the mechanisms by which double-stranded RNA viruses induce cell death and identifying viral and cellular components that result in viral pathogenesis in host organisms.
Litigation, Trade Secrets
Mr. Cruzen’s practice focuses on intellectual property litigation, including actions for patent infringement, trademark infringement, copyright infringement, and trade secret misappropriation.
Mr. Cruzen practiced appellate and intellectual property litigation at Howard Rice Nemerovski Canady Falk & Rabkin in San Francisco from 1999-2003 and 2005-2007 before joining Klarquist. He served as a law clerk in the chambers of the United Nation’s International Criminal Tribunal for Rwanda in 2004 through the ICTR internship program.
Litigation, Outsourced "In-House" IP Counsel, Startups & Emerging Businesses, Trade Secrets
Mr. Davis’ practice focuses on all areas of intellectual property litigation, representing such clients as Adobe, British Airways, Columbia River Knife & Tool, Capsugel, Costco, Danner, Expedia, Intuit, Microsoft, SAP, Twitter, and Vestas-American Wind Technology. He has represented clients in numerous federal courts nationwide in cases involving patent, trademark, trade dress, product configuration, copyright, DMCA, trade secret, unfair competition, and false advertising claims.
Mr. Davis has litigated cases in a wide range of technical fields, including the chemical, mechanical, computer, and pharmaceutical arts. Prior to law school, he studied organic and computational chemistry and worked as an organic chemist at Antivirals, Inc. (now Sarepta Therapeutics).
Law clerk to United States District Judge A. Howard Matz in the Central District of California
Over the last few years, Mr. Davis has established an impressive record as lead counsel on many patent, trademark, copyright, trade secret, unfair competition, false advertising, and other intellectual property-related cases. Cases on which he acted as counsel include the following (client represented is underlined):
Mr. Duncan’s practice focuses on the preparation and prosecution of U.S. and foreign patent applications. Mr. Duncan also has experience preparing patent opinions and conducting inter partes reexamination proceedings.
Mr. Duncan’s technical focus is in electrical engineering and software, including electronic circuits, mobile devices, cloud computing, and databases. Mr. Duncan also has experience drafting and prosecuting patent applications for mechanical devices and sporting goods. During graduate school, Mr. Duncan focused on environmental engineering and completed a master’s thesis titled “Conservation and Allocation of Slope in Gravity Sanitary Sewer Design.”
Prior to joining the firm, Mr. Duncan practiced patent law at Shook, Hardy & Bacon, LLP, in Kansas City, Missouri. Prior to attending law school, Mr. Duncan worked as an intern in the Satellite Imagery Analysis Unit of the United Nations International Atomic Energy Agency (IAEA) in Vienna, Austria. Mr. Duncan also gained experience in biosensor circuit design as an engineering assistant at Pinnacle Technology and in avionics circuit design as an electrical design engineer intern at Garmin.
Intellectual Property Counseling, Licensing and Technology Transfer, Litigation, Patents: Design, International and Utility, Post-Grant USPTO Proceedings, Trademarks
Mr. Duncan’s practice includes the preparation and prosecution of US, international (PCT), and foreign patent applications and trademark registration applications. His practice also includes preparing and analyzing licensing agreements, technology agreements, and sales/assignments of IP ownership rights. Additionally, Mr. Duncan performs invalidity and patentability searches and opinions, landscape studies, IPRs and other post-grant procedures, and litigation.
Mr. Duncan specializes in mechanical engineering fields, including medical devices and other medical technologies, computer hardware, mobile computing devices, industrial/manufacturing, 3D printing, sporting goods, footwear and apparel, underground drilling, power generation and smart grid systems, and automotive technologies. He is also experienced in software, computer science, electrical engineering, chemistry, and materials science fields.
Klarquist Sparkman, LLP
Summer Associate | 2008
Superior Court of California
Judicial Extern to the Honorable Mary Jo Levinger | 2007
Packaging Designer | 2001 – 2006
Apple Computer Corp.
Mechanical Engineering Intern | 2000
2008, Summer Associate
Intellectual Property Counseling, Litigation, Patents: Design, International and Utility
Mr. Farmer’s practice focuses on the preparation and prosecution of patent applications.
Mr. Farmer previously worked as a software engineer specializing in database development, GUIs, and technology related to business logic systems.
Prior to joining the firm in 2017, Mr. Farmer practiced civil litigation in Oregon, handling all aspects from strategy to trial. He also guided his clients to favorable outcomes through numerous mediations. Mr. Farmer spent a brief time as an extern examiner at the USPTO and worked as a patent analyst, researching prior art, patent enforceability and working with engineers on invention documentation and disclosure.
Intellectual Property Counseling, Litigation, Patents: Design, International and Utility, Post-Grant and USPTO Proceedings
Mr. Foster’s practice focuses on intellectual property litigation, as well as the preparation and prosecution of patent applications.
Mr. Foster specializes in electrical- and computer science-related technologies, including signal processing, optics, systems integration, and software development. Prior to joining Klarquist in 2017, Mr. Foster served as General Counsel to an engineering research and development firm, where he drafted patent applications, drafted and negotiated intellectual property licenses and technology agreements, and addressed various legal issues. Mr. Foster has prosecuted patents both as an attorney and as a patent examiner for the United States Patent & Trademark Office. Additionally, he has experience representing clients in personal and corporate bankruptcy proceedings and providing debt restructuring consultation.
General Counsel | 2013 – 2017
Hanley, Flight & Zimmerman
Attorney | 2012 – 2013
Foster & Smith
Bankruptcy Attorney | 2007 – 2012
United States Patent & Trademark Office
Patent Examiner | 2003 – 2004
Patents: International and Utility
Ms. Gardner prepares and prosecutes U.S. patent applications and assists with the preparation and prosecution of international and foreign patent applications.
Ms. Gardner has primary expertise in the area of chemistry, including pharmaceuticals, batteries, analyte detection, cellular imaging, nanoparticles, nanostructured films and coatings, and silicon/silane production.
Ms. Gardner has an extensive background in chemistry. She has been an adjunct instructor with Lewis & Clark College and Portland Community College. Prior to becoming an instructor, Ms. Gardner was the Chemistry Lab Director for Lewis and Clark College. She has also worked as a research assistant with Oregon Health & Science University as well as the University of Oregon.
Litigation, Copyrights, Domain Disputes, Intellectual Property Counseling, Licensing and Technology Transfer, Trademarks, Trade Secrets
Mr. Geringer’s practice focuses on intellectual property litigation, counseling, and licensing.
Tokyo Systems Laboratories | 1984 – 1986
Provided on-site CAD/CAM software support to Japanese integrated circuit manufacturers.
Law clerk to Justice Jay Rabinowitz, Alaska Supreme Court, 1989.
Intellectual Property Counseling, Licensing and Technology Transfer, Outsourced "In-House" IP Counsel, Patents: Design, International and Utility, Startup & Emerging Businesses, Trademarks
Since 1994, Mr. Girard has specialized in planning, preparing, and prosecuting U.S. and international patent applications. Mr. Girard’s practice also includes patent infringement and validity analysis, trademark work, and design patent applications. He has litigation, licensing, and counseling experience.
Mr. Girard has worked with clients in many different technology areas, including computer and information systems, manufacturing, medical devices, transportation, agriculture and wood products, and consumer products, with an emphasis on the mechanical and system aspects in these areas.
Systems engineer in the automotive industry.
Intellectual Property Counseling, Patents: International and Utility, Trademarks
Dr. Graf’s practice focuses on preparation and prosecution of U.S., international, and foreign patent applications. She also prepares legal opinions, including patentability, invalidity, infringement/non-infringement, and freedom-to-operate opinions. Additionally, Dr. Graf prepares and prosecutes trademark applications.
Dr. Graf specializes in biotechnical and medical patent applications. She has extensive research experience in the fields of cell and molecular biology, biochemistry, and genetics, including clinical diagnostics.
Oregon Health & Science University
Senior Research Assistant, Department of Molecular and Medical Genetics | 2003 – 2005
Developed and implemented clinical diagnostic tests for human genetic diseases utilizing technologies such as denaturing high performance liquid chromatography, real-time PCR, and direct sequencing.
Research Assistant, Department of Endocrinology | 2000 – 2003
Participated in basic research studies in genetics of congenital heart disease, including human genetic analysis, biochemical studies of heart protein CRELD1, and analysis of CRELD1 knockout mouse line.
University of Texas Southwestern Medical Center
Research Associate, Howard Hughes Medical Institute (post-doctoral fellow) | 1996 – 1999
Involved in basic research on genetics of retinal degeneration, including creation and analysis of knockout mouse lines, mutation screening in human subjects with retinal degeneration, and biochemical studies of retinal guanylyl cyclase activity.
Duke University, Durham, North Carolina
Graduate Research Assistant, Department of Cell Biology | 1991 – 1996
Participated in basic research on biochemical function of dopamine receptors, focused on signal transduction activity of the dopamine D2 and D3 receptors. Extensive experience in biochemical assays of second messenger signaling in cultured cell lines.
Litigation, Patents: Design, International and Utility, Post-Grant USPTO Proceedings
Mr. Grellmann’s practice focuses on the preparation and prosecution of patent applications.
Mr. Grellmann’s focus is in mechanical-related technologies including medical devices, automotive technology, and consumer products, and in electrical- and computer-related technologies, including semiconductors and software.
MSU College of Law Housing Law Clinic
Research Assistant | 2012
Campbell Campbell Edwards & Conroy
Summer Associate | 2011
Legal Aid Services of Oregon
Law Clerk | 2010
U.S. Army Corps of Engineers, Hydroelectric Design Center
Mechanical Engineering Technician | 2008
2011, Summer Associate
Intellectual Property Counseling, Licensing and Technology Transfer, Patents: Design, International and Utility, Startups & Emerging Businesses, Trademarks
Mr. Haendler’s practice includes preparing and prosecuting U.S., foreign, and international patent applications and trademark applications. His practice also includes licensing and patentability, patent infringement, and validity analysis.
Mr. Haendler has experience with a wide range of technologies, including medical devices, robotics, semiconductor processing and testing, optics, consumer products, electronics, mechanical devices, construction materials, and micro-electro-mechanical systems (MEMS).
Litigation, Trade Secrets
Mr. Hamm’s practice focuses on intellectual property litigation. Mr. Hamm has experience litigating intellectual property disputes in the software, e-commerce, videoconferencing, semiconductor, and pharmaceutical industries. Mr. Hamm has represented clients in courts across the country, including California state courts, the Northern District of California, the Eastern and Northern Districts of Texas, the District of Oregon, the Southern District of New York, and the District of Delaware.
Prior to joining the firm in 2008, Mr. Hamm was an associate at Keker & Van Nest LLP in San Francisco where he worked on matters including patent, trademark and trade secret litigation, legal malpractice defense, qui tam litigation, securities actions, and internal investigations. Before attending law school, Mr. Hamm worked for three years as a newspaper reporter for the Concord Monitor in New Hampshire.
Law clerk to the Honorable Marsha S. Berzon of the United States Court of Appeals for the Ninth Circuit, San Francisco, CA, 2001 – 2002.
Copyrights, Domain Disputes, Intellectual Property Counseling, Licensing and Technology Transfer, Litigation, Patents: Design, International and Utility, Trademarks
Mr. Hayes prepares and prosecutes patent and trademark applications, handles ex parte appeals of such applications, litigates intellectual property matters before the federal courts and other federal adjudicative bodies, such as the Trademark Trial and Appeal Board, and handles domain name disputes under the Uniform Dispute Resolution Policy.
Mr. Hayes earned a Bachelor of Science with an emphasis in Chemistry.
Technician, Envirotest Research, Inc.
Chemistry Teaching Assistant, University of Puget Sound
Intellectual Property Counseling, Licensing & Technology Transfer, Patents: Design, International and Utility, Trademarks
Dr. Heck assists clients in a wide variety of intellectual property matters, including advising on patent and trademark issues related to acquisition, enforcement, and licensing. Dr. Heck files and prosecute patent applications for a broad range of technologies. He also has significant experience in drafting legal agreements related to intellectual property, including license agreements, confidentiality agreements, and material transfer agreements. Dr. Heck has participated in legal proceedings both enforcing patents and defending against charges of patent infringement, as well as participating in post-grant review proceedings. He also counsels clients regarding issues of patentability, patent validity, and non-infringement. His time spent working in-house at the University of Nevada, Reno, helps Dr. Heck develop client-centric solutions.
Dr. Heck’s practice embraces many technical areas. Both in private practice and in-house roles, he has helped universities and research institutions patent inventions in diverse fields such as chemistry, biotechnology, chemical engineering, material science, computer-related technologies, and mechanical devices. Dr. Heck has assisted companies of all sizes, as well as individual inventors, with a variety of technologies, including power distribution units, gaming devices, and video surveillance. He is passionate about learning new technologies, and is currently taking coursework in computer science and engineering, and previously completed a technical diploma for the Intensive Brewing Science & Engineering Program offered by the American Brewers Guild.
University of Nevada, Reno (UNR), Reno, NV
Director and Patent Counsel for the Technology Transfer Office of the UNR and Desert Research Institute | 2008 – 2015
Klarquist Sparkman LLP, Portland, OR
Associate | 2004 – 2008
Nath & Associates, Reno, NV
Associate | 2004
Ian F. Burns & Associates, Reno, NV
Associate | 2002 – 2004
Howrey Simon Arnold & White, Houston, TX
Associate | 2001 – 2002
ExxonMobil Chemical Co., Baytown, TX
Summer Associate | 2000
2004 – 2008, Associate
Copyrights, Intellectual Property Counseling, Licensing and Technology Transfer, Litigation, Outsourced "In-House" IP Counsel, Patents: Design, International and Utility, Post-Grant USPTO Proceedings, Startups & Emerging Businesses
Mr. Jakubek’s practice focuses on intellectual property counseling and litigation. His experience includes patent post grant and reexamination proceedings, jury trials for patents, and the preparation and prosecution of patent and trademark applications. He also has experience in copyright litigation and registration matters. Mr. Jakubek is Klarquist’s current managing partner.
Mr. Jakubek’s practice emphasizes chemical-, computer-, and mechanical-related fields.
Copyrights, Intellectual Property Counseling, Litigation, Patents: Design, International, Plant, and Utility, Trademarks, Trade Secrets
Ms. Jelsema’s practice focuses on intellectual property litigation.
Ms. Jelsema has litigated cases and prosecuted patents in a wide range of technical fields. Prior to law school, she studied biology and biochemistry.
Parsons Behle & Latimer, Salt Lake City, UT
Litigation Associate | 2014 – 2015
Workman Nydegger, Salt Lake City, UT
Litigation Associate | 2011 – 2014
Law Clerk to Judge Jimmie V. Reyna of the U.S. Court of Appeals for the Federal Circuit, 2015 – 2016.
“How Websites Can Reduce Their Copyright Infringement Liability for What Users Post,” 27 Utah Bar J. 6, 14–17, November/December 2014
Copyrights, Patents, Post-Grant USPTO Proceedings, Trademarks
Mr. Johnson’s practice focuses on the preparation and prosecution of patent and trademark applications. His practice also includes client counseling, post-grant proceedings, and litigation.
Mr. Johnson’s focus is in electrical-, mechanical-, and computer science-related technologies.
The Honorable Chief Judge Ann Aiken, U.S. District Court for the District of Oregon
Judicial Extern | 2013
Klarquist Sparkman, Portland, Oregon
Summer Associate | 2013
Emerald Algae Solutions, Eugene, Oregon
IP Consultant/Engineer | 2012 – 2014
American Pacific Corporation, Cedar City, Utah
Engineer Intern | 2010
2013, Summer Associate
Patents: Utility, Post-Grant USPTO Proceedings
Mr. Jones focuses primarily on assisting in the preparation and prosecution of patent applications with an emphasis on computer and software-related fields.
Mr. Jones has extensive professional experience in the computer industry. His experience includes, for example, software development utilizing various languages (C, Objective C, ASP, Java, PHP, etc.), Web development, e-commerce development, database design and development, various Internet and networking technologies, and artificial intelligence.
Intellectual Property Counseling, Licensing and Technology Transfer, Litigation, Patents: Design, International and Utility, Trademarks
Dr. Jones’ practice focuses on the preparation and prosecution of patent applications. Dr. Jones served as Klarquist’s managing partner in 2014 and 2015.
Dr. Jones’ practice is focused in the fields of optics, electronics, semiconductor device design and processing, cryptography, computer software and hardware, wireless and lightwave communications, and electro-mechanical technologies.
Principal Physicist, Tektronix, Inc., Beaverton, Oregon. Dr. Jones has fifteen years of experience in product design and development in a variety of technologies including lightwave communications, fiber optics, signal processing, liquid crystal devices, lasers, electro-optics, nonlinear optics, electron optics, optical system design, chemical sensors, signal processing, and high speed electronic systems.
Copyrights, Intellectual Property Counseling, Licensing and Technology Transfer, Litigation, Outsourced "In-House" IP Counsel, Patents: Design, International and Utility, Startups & Emerging Businesses, Trademarks
Mr. Klitzke practices all phases of patent, trademark, and copyright law, including preparation and prosecution of U.S. and foreign patent applications, design patents, and trademark applications, and has experience in patent and trademark litigation, IP audits, IP due diligence, product clearance, and trade dress protection for product configurations.
Mr. Klitzke has experience in consumer products, biomedical devices, and electro-mechanical devices. Additionally, Mr. Klitzke’s experience includes work with food processing, manufacturing systems, lumber processing systems, and power transmission.
Koehring Company, Patent Department
Intellectual Property Counseling, Licensing and Technology Transfer, Litigation, Outsourced "In-House" IP Counsel, Patents: Design, International and Utility, Post-Grant USPTO Proceedings, Startups & Emerging Businesses, Trademarks, Copyrights
Mr. Lauer practices in all aspects of intellectual property law, with an emphasis on patent and trademark counseling and patent litigation. Mr. Lauer is also an active member of the Post-Grant Practice Group at Klarquist. Mr. Lauer represents both patent owners and third-party requesters in reexamination proceedings, and has been lead or backup counsel in inter partes review (IPR) and covered business method (CBM) patent reviews.
Mr. Lauer’s legal experience covers a broad range of intellectual property issues, including patent litigation, patent and trademark prosecution, product design and development consultation, patentability studies, infringement and validity opinions, and various licensing issues. Mr. Lauer represents a broad range of clients and industries, with a particular emphasis in mechanical and electromechanical devices, medical devices and related delivery systems, laboratory and diagnostic equipment, and Internet technologies.
Prior to joining Klarquist Sparkman, LLP, Mr. Lauer worked as a patent attorney at Carlson Caspers Vandenburgh & Lindquist, PA and Merchant & Gould, PC in Minnesota. Before law school, Mr. Lauer worked in Washington DC as an engineer at an engineering and law firm that provided technical consulting on the design and optimization of telecommunications networks and related FCC compliance requirements.
Litigation, Trademarks, Copyrights, Trade Secrets
Ms. Loesch litigates intellectual property matters in Federal Courts around the country, representing a variety of clients, including Fortune 500 e-commerce and software companies. She has represented both plaintiffs and defendants, and multiple clients in joint defense groups and in large multi-defendant litigations. She has extensive experience managing complex patent litigations, including participating in trials, taking and defending depositions, working with experts, and engaging in settlement negotiations.
Ms. Loesch also represents clients in trademark and copyright infringement suits in Federal Court and in trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board.
Hodgson Russ LLP, Buffalo, New York
Associate | 2006 – 2008
Law clerk to the late Honorable John T. Elfvin of the Western District of New York | 2004 – 2006
Ms. Loesch represents parties in patent, trademark, and copyright cases, in a number of District Courts and before the TTAB. Her patent litigation experience includes cases involving a variety of technologies for a diverse client base. A representative sample of her representations is below (represented party underlined):
Litigation, Outsourced "In-House" IP Counsel, Startups & Emerging Businesses, Trade Secrets
Mr. Love’s practice focuses primarily on patent litigation. He has represented parties in patent cases in federal district courts across the country, including California, Delaware, Florida, New York, Oregon, Texas, and Washington, and in the Federal Circuit Court of Appeals in Washington D.C.
Mr. Love joined Klarquist Sparkman, LLP in 2000. From 1987 to 2000, he practiced appellate and general civil litigation in Portland.
Mr. Love has represented parties in patent cases involving a wide variety of technologies, including the following cases (represented parties underlined):
Patents: Design and Utility, Startups & Emerging Businesses
Mr. Lunsford’s practice focuses on the preparation and prosecution of patent applications.
Mr. Lunsford has extensive industry experience in the areas of system architecture, software application development, web-based technologies, real-time data processing, mobile applications, database architecture, “big data” processing and analytics, distributed computing, machine learning, data visualization, cryptography, human-computer interaction, virtual reality, and augmented reality. His focus is in software-, computer-, and electrical-related technologies.
Benefitfocus.com, Inc., Charleston, SC
Patent Agent | 2010 – 2015
Software Architect | 2008 – 2015
Nelson Mullins Riley & Scarborough, LLP, Charleston, SC
Open Source Software Consultant (through Intrepid IP Services, LLC) | 2011
GrandMasters, LLC, Bellevue, WA
Software Development Consultant | 2010
Belief Networks, Charleston, SC
Senior Software Engineer | 2007 – 2008
Blackbaud, Charleston, SC
Software Engineer | 2005 – 2007
Edfinancial Services, Knoxville, TN
Software Engineer | 2003 – 2005
Intellectual Property Counseling, Litigation, Outsourced "In-House" IP Counsel, Patents: Design, International and Utility, Post-Grant USPTO Proceedings, Startups & Emerging Businesses
Mr. Mason’s practice encompasses all aspects of patent law, including litigation, prosecution, USPTO post-grant review proceedings, appeals, and counseling and opinions.
His litigation experience includes Markman and summary judgment strategy and briefing, oral argument of dispositive and non-dispositive motions, developing infringement and invalidity positions through working with experts and client technical employees, and taking and defending depositions. He has also argued before the Patent Trials and Appeal Board, and served as lead counsel on successful Patent Office inter partes review proceedings.
As a registered patent attorney and former circuit designer, Mr. Mason has prosecuted patents on technologies including electronic design automation, telecommunications, user interfaces, media playback, and control systems. He also provides clearance and freedom to operate counseling and opinions (both noninfringement and invalidity analysis).
Mr. Mason also has extensive experience working with foreign counsel in developing and executing global litigation strategies, and has participated in patent trials in both Germany and the U.K.
With an electrical engineering degree and real-world circuit design experience, Mr. Mason has represented clients on matters involving diverse technologies such as cardiac rhythm management (CRM), computer software and technologies, electronic design automation (EDA), telecommunications devices and networks, optical films and displays, and implantable medical devices.
Carlson Caspers Vandenburgh & Lindquist, PA, Minneapolis, MN
Associate | 2006 – 2011
United States District Court, District of Minnesota, Minneapolis, MN
Extern to Judge James M. Rosenbaum | 2005
LSI Logic Corporation, Bloomington, MN
ASIC Design Engineer | 2000 – 2004
Micron Technologies, Boise, ID
Process Engineer Co-op | 1997
Domain Disputes, Intellectual Property Counseling, Patents: Design, International and Utility
Mr. Maurer’s practice focuses on the preparation and prosecution of computer-related and bioinformatics patent applications, open source software, and intellectual property counseling.
Mr. Maurer’s experience includes a wide range of software development, big data, user interface, bioinformatics, and telecommunications technologies, including complex algorithms and numerous programming languages, such as assembly, C++, LISP, Java and various visual and object-oriented languages.
Five years professional computer science experience, with particular emphasis on system integration and software development. Senior Systems Analyst, 1991 – 1993.
Intellectual Property Counseling, Licensing & Technology Transfer, Patents, Trademarks
Mr. McGrath’s practice focuses on the preparation and prosecution of patent applications.
Mr. McGrath’s focus is in mechanical-, optics-, and semiconductor-related technologies.
nLIGHT Photonics, Vancouver, Washington
Patent Counsel | 2010 – 2015
United Space Alliance, Cape Canaveral, Florida
Electrical Controls Engineer, Integrated Network Control System | 2003 – 2005
Thermal Engineer, Thermal Protection System | 2002 – 2003
University of Illinois, Urbana, Illinois
Lab Technician, Semiconductor Research Lab | 2002 – 2003
IBM Endicott Research Center, Endicott, New York
Mechanical Engineer Intern | 2000
Mr. Meier’s practice focuses on the preparation and prosecution of patent applications. His practice also includes client counseling and analysis regarding licensing and patentability, patent infringement, and invalidity.
Mr. Meier has extensive industry experience developing computer architectures and integrated circuit designs for applications including embedded and reconfigurable computers, networking, storage, and liquid crystal display technologies. His technical expertise focuses on computer hardware-, software-, and electrical engineering-related technologies. He also has experience prosecuting patents in the mechanical, optical, and business method arts.
Prior to attending law school, Mr. Meier worked as a computer hardware engineer at various large companies and start-ups including: Hewlett-Packard Company, STMicroeletronics, StarGen Inc., and Ambric Inc. He worked at Rockwell International, Cyrix Corporation, and Microsoft Research as an intern. Mr. Meier also held research and teaching assistant positions at the University of Washington and the University of Colorado. Prior to joining the firm, Mr. Meier worked as a law clerk at Mentor Graphics Corporation, Stoel Rives LLP, and Alleman Hall McCoy Russell & Tuttle LLP.
Intellectual Property Counseling, Patents
Dr. Mitchell’s practice focuses on the preparation and prosecution of patent applications. Her practice also includes client counseling and analysis regarding licensing and patentability, patent infringement, and invalidity.
Dr. Mitchell’s focus is in life science-, biochemistry-, and biophysics-related technologies.
CoMotion (the University of Washington technology transfer office), Seattle, Washington
Intern | 2016
Cascadia Intellectual Property, Seattle, Washington
Law Clerk | 2014 – 2015
PATH, Seattle, Washington
Intern | 2015
University of North Carolina at Chapel Hill, Chapel Hill, North Carolina
Research Assistant | 2006 – 2013
Wright State University, Dayton, Ohio
Research Assistant | 2004 – 2006
David M. Deutsch Co. L.PA., Dayton, Ohio
Law Clerk | 2003 – 2004
Law Clerk to Judges David Sunderland and G. Jack Davis of Montgomery County Court of Common Pleas, Dayton, Ohio, 2000 – 2003.
Patents: Design, International, and Utility
Dr. Morlock prepares and prosecutes U.S. and international patent applications.
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.
Landon IP (CPA Global), Remote
Patent Analyst | 2016 – 2017
Mintz Levin, San Francisco, CA and Boston
Patent Agent | 2016 – 2016
Alleman, Hall, McCoy, Russell & Tuttle, Portland, OR
Technical Consultant | 2012 – 2013
University of Wisconsin – Madison, Madison, WI
Graduate Research Fellow | 2007 – 2012
Wisconsin Alumni Research Foundation, Madison, WI
Patent Mining Intern | 2009 – 2010
Dartmouth Medical School, Hanover, NH
Laboratory Technician | 2006, 2007
Cal Poly, San Luis Obispo, CA
Student Research | 2006 – 2007
Intellectual Property Counseling, Licensing and Technology Transfer, Patents: International and Utility, Trademarks
Dr. Noonan prosecutes U.S., international, and foreign patent applications. He advises clients about patentability, infringement, joint research agreements, and strategic product development. He also represents clients in the acquisition and sale of intellectual property, including due diligence evaluations. Dr. Noonan is the head of the firm’s life sciences group.
As both a physician and a patent attorney, Dr. Noonan has a broad perspective about the practical applications of medical and biological inventions. His medical education and residency training in internal medicine and ophthalmology also provide specialized expertise in a variety of fields. He has worked on many cases related to human genetics, molecular biology, biochemistry, pharmacology, medical and surgical devices, high-throughput micro-array technology, optics, engineered proteins, vaccines, cancer treatment, and imaging analysis.
Prior to joining the firm in 1985, Dr. Noonan was a patent prosecutor at Sughrue, Mion et al. in Washington, D.C. and a patent litigator at Keaty & Keaty, New Orleans, LA. Dr. Noonan also participated in an Ophthalmology Residency at Oregon Health & Science University and the Internal Medicine Residency at Providence Medical Center in Portland, OR.
Copyrights, Intellectual Property Counseling, Licensing and Technology Transfer, Patents: Design, International, Plant and Utility, Post-Grant USPTO Proceedings, Trademarks
Mr. Petersen counsels clients in connection with a wide variety of intellectual property issues. His practice includes preparation and prosecution of U.S. and foreign patent applications, plant patents, U.S. and foreign trademark protection, protection and registration of copyrightable works, licensing of intellectual property including patents, trademarks, copyrights and computer software. Although no longer practicing as a litigator, Mr. Petersen has litigated patent and other intellectual property disputes.
Mr. Petersen’s technical experience includes software, electrical engineering, and mechanical fields.
Copyrights, Intellectual Property Counseling, Licensing and Technology Transfer, Patents: Design, International and Utility, Trademarks
Mr. Polley practices all phases of U.S. and international patent and trademark law.
Mr. Polley’s practice focuses on technologies relating to pharmaceuticals, food chemistry, water purification, paper making, semiconductor materials, and biotechnology; including molecular biology, biochemistry, and immunology.
Weyerhaeuser Company, Patent and Licensing Division of Law Department. Consultant on patent matters related to pulp and paper chemistry and heat resistant ceramic materials, 1974 – 1975.
Intellectual Property Counseling, Licensing and Technology Transfer, Litigation, Patents: International and Utility, Post-Grant USPTO Proceedings
Mr. Rinehart specializes in the preparation and prosecution of software patents. Aside from patent prosecution, he has extensive experience with third-party patent review projects (e.g., non-infringement analysis, invalidity analysis) and portfolio analysis projects. Mr. Rinehart also has experience with patent litigation and reexamination.
Mr. Rinehart prepares and prosecutes patents in technical areas such as media encoding and decoding (codecs), cryptography, quantum communications, database architectures, data visualization, and user interface design.
Northfield Information Services, Inc., Boston, MA | 1996 – 1998
Dr. Rohatgi prepares and prosecutes U.S. and foreign patent applications. Since joining Klarquist, he has primarily been working with the Software group, writing applications, and prosecuting existing cases. He has also been working with other practice areas on physics-related technologies.
Dr. Rohatgi’s technical expertise includes diverse areas such as organic LEDs and displays, electronics, medical devices, computing equipment, software, wireless communication, and optical networks. Dr. Rohatgi has 14 years industry experience, as well as six years experience in university and national laboratory settings.
As a physicist, Dr. Rohatgi was part of the Stanford University team that demonstrated the world’s first visible light Free-Electron Laser, and spent another three years at Lawrence Livermore National Labs developing a positron-electron collision experiment. Subsequently, he spent 14 years developing commercial electronics and associated software and firmware. Dr. Rohatgi’s projects have included a 200 MHz RF Lock-in Amplifier and a 60 GHz point-to-point radio. He has also been part of start-up teams developing medical devices, including a whole body PET scanner and a fiber optic probe for coronary arteries.
Global OLED Technology (GOT), Herndon, VA | 2012 – 2016
Technology, Patents, and Licensing (TPL), Dolyestown, PA | 2006-2012
Medeikon Corporation, Ewing, NJ | 2005 – 2006
PhotoDetection Systems, Acton, MA | 2001 – 2005
SierraCom, Hopkinton, MA | 2000 – 2001
PMC Beta, Natick, MA | 1999 – 2000
Stanford Research Systems, Sunnyvale, CA | 1992 – 1997
Lawrence Livermore National Laboratory, Livermore, CA | 1989 – 1992
Stanford University, Stanford, CA | 1986 – 1989
Dr. Rohatgi is listed as inventor on six U.S. patents
Intellectual Property Counseling, Licensing and Technology Transfer, Outsourced "In-House" IP Counsel, Patents: International and Utility, Startups & Emerging Businesses
Mr. Rupert’s practice includes intellectual property transactions, the preparation and prosecution of patent applications, and other patent matters.
Mr. Rupert’s areas of expertise are in chemical and mechanical technologies such as pharmaceuticals, polymers, adhesives, coatings, fibers, composites, inorganic materials, semiconductors, and process systems.
Intel Corporation, Hillsboro, OR
Senior Attorney | 2000 – 2001
Lord Corporation, Cary, NC
Senior Intellectual Property Attorney | 1994 – 2000
AlliedSignal Incorporated, Fibers Group, Petersburg, VA
Senior Counsel | 1991 – 1994
Foley & Lardner, Alexandria, VA
Associate Attorney | 1989 – 1991
Intellectual Property Counseling, Licensing and Technology Transfer, Patents: Design, International, Plant and Utility, Trademarks
Dr. Rybak’s practice is focused on the preparation and prosecution of patent and trademark applications.
Dr. Rybak’s focus is biotechnology, including molecular biology, biochemistry, virology, medical diagnostics, and botany. She also prepares patentability opinions, freedom-to-operate opinions, non-infringement opinions, invalidity opinions, and prosecution and litigation of United States trademarks. In addition she prepares and prosecutes plant patents.
Oregon Health & Science University, Portland, OR
Post-Doctoral Fellow | 1997 – 1998
Designed and constructed genetically engineered fluorescent-tagged proteins, examined trafficking of these proteins using real-time microscopy and developed in vitro protein binding assays; National Institutes of Health post-doctoral Neuroendocrine Training Grant, 1997 – 1998
Carnegie Mellon University, Pittsburgh, PA
Doctoral Candidate, Department of Biological Sciences | 1992 – 1997
Developed cell biological and theoretical methods to study mechanisms of endosomal pH regulation.
Phi Kappa Phi, National Honor Society (1996); American Society for Cell Biology predoctoral/student travel award to attend the 1995 meeting; American Heart Association, Pennsylvania Affiliate, student fellowship (1994-1996); National Science Foundation fellowship through Graduate Research Training Grant at the Center for Light Microscope Imaging and Biotechnology (1994-1996); National Institutes of Health award to attend the Physiology: Cellular and Molecular Biology course at the Marine Biological Laboratory, Woods Hole, Massachusetts (1994); Graduate Student Conference Presentation Grant from Carnegie Mellon University to attend the 1993 American Society for Cell Biology meeting.
University of Maryland at Baltimore, Baltimore, MD
Research Assistant | 1990 – 1992
Studied the effects of the calcium pool inhibitors on cell growth.
Dr. Schwartz’s practice focuses on the preparation and prosecution of patent applications.
Dr. Schwartz’s focus is in chemical-related technologies, including organic chemistry and biotechnology.
Oregon State University
Teaching Assistant | 2004 – 2006, 2009
Oregon State University
Research Assistant for Dr. Rich Carter | 2006 – 2008
Organic synthesis, methodology, and catalyst development
St. Edward’s University
Undergraduate Researcher and Supplemental Instructor | 2003 – 2004
2010 – 2012, Summer Associate and Law Clerk
Patents: Design and Utility
Dr. Scott prepares and prosecutes U.S., foreign, and international patent applications. He also advises clients about patentability, inventorship, freedom-to-operate, and strategic product development.
Dr. Scott’s practice emphasis is in biotechnology, including applications relating to biochemistry, molecular genetics, virology, immunology, neurobiology, pharmaceuticals, cellular imaging, and bioinformatics.
Vollum Institute, Oregon Health & Science University, Portland, OR
Graduate Student | 1999 – 2006
Laboratory Technician | 1997 – 1999
Responsible for design and completion of original biomedical research concerning subcellular localization and phosphorylation of proteins in the endosomal system.
2007 – 2010, Summer Associate & Student Law Clerk
Intellectual Property Counseling, Patents: Design, International and Utility
Mr. Scotti’s practice includes all facets of intellectual property practice including patents, opinions, clearance, and litigation. He has worked in both the U.S. and Europe on patent drafting, patent litigation, and trademark prosecution. His extensive experience in both the U.S. and Europe gives him a unique perspective on the international protection of intellectual property. Mr. Scotti has lectured in both the U.S. and Europe on how to draft patent applications for global protection. He has also assisted in European litigations with issues that intermingle U.S. and European law.
Mr. Scotti’s practice emphasizes electrical- and computer-related fields.
Studio Torta, Turin, Italy
IP Attorney | 2004 – 2007
While working in Europe, Mr. Scotti prepared and prosecuted European patent applications related to software and electronics. He also worked extensively on community trademark oppositions and filing. Mr. Scotti attended European Patent classes at the University of Strasbourg, France, prior to passing the European Qualifying Examination.
Klarquist Sparkman, LLP, Portland, OR
IP Attorney | 1994 – 2003
Mr. Scotti was an Associate from 1994-2001 and a Partner from 2001-2003 before transitioning to Europe. His practice focused primarily on US patent prosecution and patent litigation. Additionally, he assisted on a large due diligence review.
Formation Inc., Moorestown, New Jersey
Member Technical Staff | 1988 – 1991
Designed digital hardware and software, including microprocessor-based systems. Programming languages include C, C++ and assembly language.
1994 – 2001, Associate
Intellectual Property Counseling, Licensing and Technology Transfer, Litigation, Outsourced "In-House" IP Counsel, Post-Grant USPTO Proceedings, Startups & Emerging Businesses, Trade Secrets
Mr. Siegel focuses his practice on all aspects of intellectual property litigation, including patent, trade secret, trademark, and copyright disputes. Mr. Siegel served as Klarquist’s managing partner in 2012 and 2013.
Prior to joining the firm, Mr. Siegel practiced general civil litigation. He has experience in all phases of litigation, including trials (bench and jury), pre-trial discovery, motion practice, and appeals. Prior to attending law school, Mr. Siegel gained experience in the software industry as an information systems consultant for Andersen Consulting.
Mr. Siegel has represented parties in patent and trademark cases involving a wide variety of technologies, including the following cases (represented party underlined):
Patents: International and Utility
Dr. Siegel prepares and prosecutes U.S., foreign, and international patent applications.
Dr. Siegel has been a registered patent agent for sixteen years. She has a Ph.D. in molecular genetics, completed post-doctoral fellowships in cancer biology and immunology, and did academic research in the field of transplant rejection. She has prosecuted numerous patent applications related to monoclonal antibodies, stem cells, diagnostic assays, vaccines, anti-viral agents, adjuvants, pharmaceuticals, medical devices, cancer treatment, and therapeutics for autoimmune disease.
Fish & Richardson, P.C., Menlo Park, CA
Stanford University Medical Center, Stanford, CA
Senior Research Scientist, Cardiovascular Medicine
Howard Hughes Medical Institute, Stanford University Medical Center, Stanford, CA
Post-doctoral Fellow (Irvington Institute Fellowship)
University of California, San Francisco, CA
Post-doctoral Fellow (National Institutes of Health Fellowship)
Chemical, Life Sciences and Biotechnology, Medical Devices and Diagnostics, Patents: International and Utility
Dr. Slade’s practice focuses on patent preparation and prosecution, including the coordination of international patent strategies. She has experience counseling clients to effectively tailor their IP strategies to address business goals, including performing due diligence, patentability, and freedom-to-operate analyses. Additionally, Dr. Slade worked as a research chemist in biotech for more than 10 years prior to becoming an attorney, and is an inventor on multiple patents.
Dr. Slade has extensive experience drafting and prosecuting patent applications which incorporate chemical technologies. She has more than a decade of practical experience in the biotech industry, and combines her extensive background as a laboratory chemist and inventor with her legal expertise to provide practical guidance to clients in the chemical, biotechnical, materials, and medical device industries.
Michael Best & Friedrich, Salt Lake City, UT
Associate | 2014 – 2016
Stoel Rives, LLP, Salt Lake City, UT
Associate | 2009 – 2014
Summer Associate | 2008
University of Utah, Salt Lake City, UT
Legal Intern, Technology Commercialization Office | 2007 – 2008
Myriad Pharmaceuticals, Inc., Salt Lake City, UT
Scientist, Medicinal Chemistry | 2000 – 2006
SIDDCO, Tucson, AZ
Scientific Fellow, Chemistry | 1998 – 2000
Darwin Molecular Corporation, Bothell, WA
Scientist, Chemistry | 1995 – 1998
Copyrights, Intellectual Property Counseling, Patents: Design, International and Utility, Trademarks
Mr. Slater joined Klarquist in 1990, and practices all aspects of intellectual property law, including patent, trademark, and copyright law.
Mr. Slater’s primary experience is in patent prosecution in chemical, biotechnology, and mechanical technologies, with a primary emphasis in preparing U.S. and foreign applications related to pharmaceuticals, drug delivery, and vaccines. Mr. Slater served as the firm’s managing partner from 2010-2011.
University of Oregon, Eugene, OR
Teaching assistant, Department of Chemistry | 1987 – 1990
Oregon State University, Corvallis, OR
Research Assistant, Dr. J.D. White | 1984 – 1987
Pharmaceutical synthesis; structure determination of protein and natural products; molecular modeling; drug delivery, particularly prodrug synthesis.
University of Colorado, Boulder, CO
Research Assistant, Dr. David M. Walba, Department of Chemistry | 1982 – 1984
Synthesis, structure determination of natural products, and molecular modeling.
Intellectual Property Counseling, Litigation, Patents, Post-Grant USPTO Proceedings, Trademarks, Trade Secrets
Since joining Klarquist in 2006, Mr. Toddy has focused his practice on all aspects of Intellectual Property disputes, from pre-litigation and “alternatives to litigation” such as PTO reexaminations and other post-grant proceedings, through discovery, motion practice and summary judgment, to preparation for trial, as well as related settlement and licensing work. Mr. Toddy has particular experience litigating patents involving computer software, computer hardware, video game technology and e-commerce applications. He has represented technology clients such as Microsoft, SAP, eBay, Adobe, LinkedIn, Netflix, Twitter, Hewlett-Packard, Nokia, and Amazon.com, as well as retail clients such as Office Depot, Staples, J.C. Penney, Burlington Coat Factory, Dillard’s and Costco in patent, trademark and trade secret disputes nationwide, including in California, Delaware, Florida, Massachusetts, Nevada, Puerto Rico, Tennessee, Texas and Washington.
Mr. Toddy also has experience in advising clients regarding crafting settlement agreements and intellectual property licensing issues, and has prepared a number of opinions regarding both non-infringement and invalidity. Finally, Mr. Toddy has extensive experience working on various post-grant proceedings in the USPTO, and has played an integral role in successfully appealing or defending appeals to the Patent Trial and Appeal Board (formerly BPAI). Mr. Toddy’s work on these reexams and appeals often resulted in cancellation of patent claims asserted in litigation for which Klarquist’s clients had obtained a stay pending the outcome of ex parte or inter partes reexams, in many cases avoiding entirely or greatly reducing the cost of having to litigate these claims in district court.
Mr. Toddy’s practice emphasizes computer- and mechanical-related fields, and in particular the field of Web commerce.
Morgan Miller Blair
Associate | 2005 – 2006
Quinn Emanuel Urquhart Oliver & Hedges, LLP
Associate | 2004 – 2005
Judicial Extern to the Honorable Jack Weinstein, Eastern District of New York | 2003
Over the past decade, Mr. Toddy has been involved in all aspects of a large number of patent and trademark cases, including the following representative litigation cases (represented parties underlined), as well as, in many cases, related PTO and/or PTAB proceedings:
Litigation, Post-Grant USPTO Proceedings
For 33 years, Mr. Vandenberg has been litigating patents around the country for technology clients including Microsoft, SAP, eBay, Nautilus, and Mentor Graphics.
Supreme Court and Courts of Appeals: Mr. Vandenberg has argued a dozen appeals before the Court of Appeals for the Federal Circuit. He successfully argued before the Supreme Court of the United States in Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369, for rejection of the Federal Circuit’s “insolubly ambiguous” and “amenable to construction” test for enforcing the Patent Act’s mandate that patent claims “particularly point out and distinctly claim” the patent’s invention.
Court Trials: Mr. Vandenberg has first-chair tried patent infringement suits, and copyright infringement suits, and trademark infringement suits, and product-configuration trade dress suits. Most recently, he and a team at Klarquist obtained an $8.42 Million jury verdict in a false advertising action.
PTAB Trials: Mr. Vandenberg has been lead counsel in Patent Office trial proceedings.
Patent-Law Training and Advocacy: Since 2004, Mr. Vandenberg has been the primary editor of an extensive summary of substantive defenses and related strategies in patent infringement suits, posted at www.patentdefenses.com. He speaks throughout the nation on patent law, district-court patent litigation, PTAB patent trials, and patent appellate practice. He emphasizes untraditional approaches to successfully defending against a patent infringement suit while improving the law and patent system in the process. To the same end, he has authored many Amici briefs in the U.S. Supreme Court and the Federal Circuit on behalf of scores of technology companies and associations.
Engineer at Pratt & Whitney Aircraft, jet engine development.
Intellectual Property Counseling, Patents, Litigation, Outsourced "In-House" IP Counsel, Post-Grant USPTO Proceedings, Startups & Emerging Businesses
Mr. Wilson focuses on the preparation and prosecution of patent applications in the electrical engineering and computer science fields. His practice also includes prosecuting and defending patent post-grant review proceedings, assisting with domestic and foreign patent litigation (including infringement and invalidity analysis and discovery), and counseling clients regarding patent infringement and validity.
Mr. Wilson has eleven years of experience developing electronic design automation (EDA) software tools and related methodologies for high performance integrated circuit designs. His technical expertise spans a number of fields in the electrical engineering and computer science disciplines, including VLSI design, analog and digital circuits, semiconductors, signal processing, power and control systems, computer graphics, and software engineering. Mr. Wilson also has experience preparing and prosecuting patent applications in the mechanical, nanotechnology, and business method arts.
Intel Corporation, Hillsboro, OR | 1995 – 2007
While at Intel, Mr. Wilson developed design and verification EDA tools for leading-edge deep submicron designs, including the Intel Pentium® II, Pentium® 4, and Core™ i7 microprocessors. In addition, Mr. Wilson managed a team of design automation engineers, and served as an invention disclosure reviewer for the Intel Legal Software IP committee.
Carnegie Mellon Research Institute, Pittsburgh, PA | 1993 – 1994
Mr. Wilson designed, built, and tested wired and wireless industrial control and solid state gas sensor prototypes.
Mr. Wilson received three Intel Division Awards for outstanding execution in layout verification and tapeout for a 90 nm microprocessor, analysis and implementation of layout fixes for yield increase for a 0.18 μm processor, and development of an incremental parameterized standard cell layout methodology.
Intellectual Property Counseling, Litigation, Patents, Post-Grant USPTO Proceedings
Mr. Winn’s practice emphasizes patent litigation and associated proceedings. His experience includes patent reexamination and reissue proceedings and jury trials for patents. He has also litigated trademark, trade dress, and copyright infringement cases.
Patents: Design, International, and Utility
Dr. Zhang’s practice includes the preparation and prosecution of US, international (PCT), and foreign patent applications.
Dr. Zhang specializes in electrical engineering and device physics fields, including RF circuit/system design, analog/digital and mixed-signal wireless communications including the LTE/5G and IEEE 802 standards, antennas, semiconductors, and computer hardware and software. Prior to joining the firm in 2016, Dr. Zhang worked at Intel where she was delegate to the 3GPP forum concerning LTE/5G technology and had a leading role in the development of RF portions of 5G. Dr. Zhang also contributed to RF transceiver modeling and bench testing procedures for digital RF transceivers, high volume manufacture of WiFi products, and regulatory compliance.
Intel, Hillsboro, OR
System Engineer | 2013 – 2016
RF Engineer | 2011 – 2013
MWG Module Quality & Reliability Engineer | 2010 – 2011
Agilent Technologies, Santa Clara, CA
Intern Hardware Engineer | 2007 – 2008
University of California at Davis, Davis, CA
Research Assistant | 2005 – 2009