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.
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
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.
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):
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, 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.
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).
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
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
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
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, 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, 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
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, 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 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:
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.