Klarquist’s professional staff of attorneys and patent agents hail from diverse backgrounds, and have deep and broad legal and industry experience.
Post-Grant USPTO Proceedings
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, 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, 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
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
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, 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, 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, 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
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.
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, 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):
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.