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
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.
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
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 the preparation and prosecution of patent applications. His practice also includes intellectual property litigation.
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
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.
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).
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
Patents: Design and Utility
Ms. Johnson’s practice includes all areas of intellectual property law, with a focus on the preparation and prosecution of U.S. and foreign patent applications.
Ms. Johnson has a degree in bioengineering and biomedical engineering from Oregon State University. In addition to having experience as a process engineer, she recently interned in the patent department at NASA.
NASA Glenn Research Center, Cleveland, OH
Patent Department Extern | 2016
Klarquist Sparkman, Portland, OR
Summer Associate | 2016
Arclin, Portland, OR
Process Engineering Intern | 2013-2014
E. & J. Gallo Winery, Modesto, CA
Process Engineering Intern | 2012
2015, Summer Associate
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 prosecution and patent litigation. Mr. Lauer is also an active member of the Post-Grant Practice Group at Klarquist, which represents both patent owners and patent challengers in inter partes review (IPR), covered business method (CBM) reviews, and reexamination proceedings.
Mr. Lauer’s represents a broad range of clients and industries, including mechanical and electromechanical devices, medical devices and related delivery systems, laboratory and diagnostic equipment, processes and manufacturing equipment, and consumer products. Before law school, he worked in Washington DC as an engineer at a firm that provided engineering services involving the design of telecommunications networks and related FCC compliance requirements.
Mr. Lauer’s broad experience in intellectual property matters and deep understanding of the science and technology area of his clients allow him to provide efficient and effective counseling on the issues that matter to his clients. Mr. Lauer recognizes that not all clients are the same and not all problems can be solved in the same manner. His goal in representing every client is not to just find a solution to the problem at hand, but to find the right solution that best serves that client’s specific needs.
Carlson Caspers Vandenburgh & Lindquist, PA
Merchant & Gould, PC
Summer Associate, 2001
Fitzpatrick Cella Harper & Scinto
Law Clerk/Patent Agent, 1999-2002
Becker & Associates, PC
Consulting Engineer, 1994-1999
Intellectual Property Counseling, Litigation, Outsourced "In-House" IP Counsel, Patents: Design, International and Utility, Post-Grant USPTO Proceedings, Startups & Emerging Businesses
Andy’s practice encompasses all aspects of patent law, with a focus on litigation and USPTO post-grant review proceedings. He has successfully argued before the Federal Circuit, the Patent Trials and Appeal Board (“PTAB”), and before federal district courts at Markman and summary judgment hearings. A registered patent attorney and former circuit designer, Andy also has prosecuted patents on technologies including electronic design automation (“EDA”), telecommunications, network infrastructure, media CODECs, and control systems. He also has extensive experience working with foreign counsel on global patent litigation strategies, and participated in patent trials in both Germany and the U.K.
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
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.
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, 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):
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 inter partes reviews, 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 both prosecuting and litigating patents involving computer software, computer hardware, video game technology and e-commerce applications, as well as medical devices and treatments. He has represented technology clients such as Microsoft, Samsung, 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 intellectual property disputes nationwide, including in California, Delaware, Florida, Idaho, Massachusetts, Nevada, Puerto Rico, Tennessee, Texas and Washington.
Mr. Toddy also has experience in advising clients regarding freedom-to-operate issues, crafting settlement agreements, and intellectual property licensing, 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, including first-chair trial and appeal experience in inter partes reviews and reexaminations 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 both computer- and mechanical-related fields, and in particular the fields of Web commerce and medical devices.
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:
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.
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.