Klarquist’s professional staff of attorneys and patent agents hail from diverse backgrounds, and have deep and broad legal and industry experience.
Licensing & Technology Transfer
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
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
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, 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).
Intellectual Property Counseling, Licensing and Technology Transfer, Patents: International, Plant and Utility, Post-Grant USPTO Proceedings, Trademarks
Dr. Harding prepares and prosecutes U.S., foreign, and international patent applications, as well as advises clients with regard to patent-related administrative proceedings, including interferences, European third-party document submissions, and European oppositions. She also prepares legal opinions, such as patentability, inventorship, freedom to use, and infringement/non-infringement opinions. License drafting and interpretation and client counseling regarding portfolio management and portfolio acquisition/transfer are additional aspects of Dr. Harding’s work.
Dr. Harding’s technology areas include molecular and cell biology, basic and applied plant biology and genetics, biofuel production, cancer and immunology, infectious diseases (including viral diseases), vaccines, and microarray (including nucleic acid and protein arrays) and high throughput technologies. Her laboratory experience includes recombinant DNA techniques, protein isolation and analysis, immunology, and molecular, plant, and microbial genetics, as well as plant tissue culture (monocots and dicots). Research systems in which Dr. Harding has worked include tobacco, tomato, barley, wheat, and cucumber, as well as bacteria, yeast (S. cerevisiae), and Chlamydomonas.
U.S. District Court – Northern District of N.Y., Hon. Thomas J. McAvoy, Chief Judge, Binghamton, NY
Judicial Externship | Spring 1998
Cornell University Law School, Ithaca, NY
Research Assistant to Professor Yvonne Cripps | Fall 1997
Sterne, Kessler, Goldstein & Fox P.L.L.C., Washington, D.C.
Summer Associate | May 1997 – August 1997
University of California, Davis, CA
Teaching Assistant, Department of Microbiology | Spring 1995
Graduate Research Associate, Depts. of Microbiology and Plant Biology | May 1991 – June 1996
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 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.
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.
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
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
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.
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):