Klarquist’s professional staff of attorneys and patent agents hail from diverse backgrounds, and have deep and broad legal and industry experience.
Software & Internet Technology
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.
Litigation, Outsourced "In-House" IP Counsel, Trademarks
Since 1995, Mr. Carraway has focused his practice exclusively on intellectual property litigation, representing such clients as Microsoft, SAP, eBay, LinkedIn, and NBC in patent litigation in federal courts nationwide. Mr. Carraway has particular experience litigating patents involving computer software, computer hardware, video game technology, and e-commerce. He has argued at numerous claim construction and summary judgment hearings and Federal Circuit appeals. Prior to entering private practice, Mr. Carraway served as a law clerk to the Hon. William C. Bryson of the U.S. Court of Appeals for the Federal Circuit. Some of the federal courts where Mr. Carraway has recently litigated include California (Northern and Central Districts), Colorado, Delaware, Massachusetts, New York (Southern District), Oregon, Texas (Eastern and Western Districts), Virginia (Eastern District), and Washington (Western District).
Michael Best & Friedrich, LLP
Associate | 1996 – 1999
Law clerk to the Honorable William C. Bryson of the United States Court of Appeals for the Federal Circuit | 1995 – 1996
Over the last few years, Chris has served as lead counsel on the following patent and trademark litigation cases (represented party underlined):
Patents: International and Utility
Mr. Cesarano is a patent agent with expertise in patent prosecution specializing in highly technical applications focused on electrical engineering, wireless technology, and computer hardware and software. Mr. Cesarano has more than 15 years of industrial experience in electrical engineering designing technological applications for such clients as Lockheed Martin, NASA, and Oleson Microwave.
Mr. Cesarano has extensive experience advising tech companies and government entities across several different technology areas, including electrical engineering and device physics fields, computer and information systems architecture and integration, cellular and wireless technology, RF engineering, and security systems architecture. His technical expertise primarily focuses on computer hardware-, software-, and electrical engineering-related technologies.
Ms. Cleveland’s practice focuses on intellectual property litigation. She has extensive experience handling disputes for clients, from obtaining favorable results in early motion practice, to efficient management of cases through discovery, claim construction, summary judgment and trial. Ms. Cleveland has experience in several federal district courts, around the country, and has argued at the Federal Circuit. Ms. Cleveland has also served as the firm’s managing partner.
Prior to joining the firm, Ms. Cleveland was in the Washington D.C. office of Arnold & Porter where she worked on a variety of litigations including intellectual property, products liability, and civil and criminal antitrust.
Member, AIPLA Patent Litigation Committee’s Damages Subcommittee
Publication Staff, AIPLA Quarterly Journal, 1995 – 1996
Cases on which Ms. Cleveland has acted as counsel include the following (represented party underlined):
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, 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.
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
Litigation, Trade Secrets
Mr. Hamm’s practice focuses on a wide variety of intellectual property litigation, including patent, trade secret, copyright, trademark, and licensing disputes. He frequently leads litigation teams, and he has experience in all phases of litigation and in numerous technologies, including software, hardware, e-commerce, semiconductor, mechanical, and pharmaceutical. His clients range from the world’s most successful technology companies to startups. Mr. Hamm represents clients in federal courts across the country, particularly up and down the West Coast, in Texas, and in Delaware.
Prior to joining the firm in 2008, Mr. Hamm was an associate at Keker & Van Nest LLP in San Francisco. Before attending law school, Mr. Hamm worked for three years as a newspaper reporter for the Concord Monitor in New Hampshire.
Law clerk to the Honorable Marsha S. Berzon of the United States Court of Appeals for the Ninth Circuit, San Francisco, CA, 2001 – 2002.
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: Utility, Post-Grant USPTO Proceedings
Mr. Jones focuses primarily on assisting in the preparation and prosecution of patent applications with an emphasis on computer and software-related fields.
Mr. Jones has extensive professional experience in the computer industry. His experience includes, for example, software development utilizing various languages (C, Objective C, ASP, Java, PHP, etc.), Web development, e-commerce development, database design and development, various Internet and networking technologies, and artificial intelligence.
Intellectual Property Counseling, Licensing and Technology Transfer, Litigation, Patents: Design, International and Utility, Trademarks
Dr. Jones’ practice focuses on the preparation and prosecution of patent applications. Dr. Jones served as Klarquist’s managing partner in 2014 and 2015.
Dr. Jones’ practice is focused in the fields of optics, electronics, semiconductor device design and processing, cryptography, computer software and hardware, wireless and lightwave communications, and electro-mechanical technologies.
Principal Physicist, Tektronix, Inc., Beaverton, Oregon. Dr. Jones has fifteen years of experience in product design and development in a variety of technologies including lightwave communications, fiber optics, signal processing, liquid crystal devices, lasers, electro-optics, nonlinear optics, electron optics, optical system design, chemical sensors, signal processing, and high speed electronic systems.
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
Patents: Design, International, and Utility
Dr. Lian’s practice includes the preparation and prosecution of U.S., international, and foreign patent applications, and performing patentability and prior art searches and freedom-to-operate analysis.
Dr. Lian’s professional experience includes more than ten years of academic research and more than thirteen years of industrial research and development, spanning areas including medical devices, mobile health, signal/image processing, and wearable technology, among others. He specializes in signal processing, statistical analysis, physiological modeling, and algorithm development for embedded systems. He has published three book chapters and more than seventy peer-reviewed research articles. He is the recipient of more than forty issued or pending U.S. patents and dozens of European patents. He has also served as an expert reviewer for more than a dozen scientific journals.
Ganz Pollard, LLC, Hillsboro, OR
Patent Agent | 2016 – 2017
Micro Systems Engineering Inc., Lake Oswego, OR
Staff Engineer, Project Manager | 2002 – 2015
Litigation, Trademarks, Copyrights, Trade Secrets
Ms. Loesch litigates intellectual property matters in Federal Courts around the country, representing a variety of clients, including Fortune 500 e-commerce and software companies. She has represented both plaintiffs and defendants, and multiple clients in joint defense groups and in large multi-defendant litigations. She has extensive experience managing complex patent litigations, including participating in trials, taking and defending depositions, working with experts, and engaging in settlement negotiations.
Ms. Loesch also represents clients in trademark and copyright infringement suits in Federal Court and in trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board.
Hodgson Russ LLP, Buffalo, New York
Associate | 2006 – 2008
Law clerk to the late Honorable John T. Elfvin of the Western District of New York | 2004 – 2006
Ms. Loesch represents parties in patent, trademark, and copyright cases, in a number of District Courts and before the TTAB. Her patent litigation experience includes cases involving a variety of technologies for a diverse client base. A representative sample of her representations is below (represented party underlined):
Litigation, Outsourced "In-House" IP Counsel, Startups & Emerging Businesses, Trade Secrets
Mr. Love’s practice focuses primarily on patent litigation. He has represented parties in patent cases in federal district courts across the country, including California, Delaware, Florida, New York, Oregon, Texas, and Washington, and in the Federal Circuit Court of Appeals in Washington D.C.
Mr. Love joined Klarquist Sparkman, LLP in 2000. From 1987 to 2000, he practiced appellate and general civil litigation in Portland.
Mr. Love has represented parties in patent cases involving a wide variety of technologies, including the following cases (represented parties underlined):
Patents: Design and Utility, Startups & Emerging Businesses
Mr. Lunsford’s practice focuses on the preparation and prosecution of patent applications.
Mr. Lunsford has extensive industry experience in the areas of system architecture, software application development, web-based technologies, real-time data processing, mobile applications, database architecture, “big data” processing and analytics, distributed computing, machine learning, data visualization, cryptography, human-computer interaction, virtual reality, augmented reality, and artificial intelligence. His focus is in software-, computer-, and electrical-related technologies.
Benefitfocus.com, Inc., Charleston, SC
Patent Agent | 2010 – 2015
Software Architect | 2008 – 2015
Nelson Mullins Riley & Scarborough, LLP, Charleston, SC
Open Source Software Consultant (through Intrepid IP Services, LLC) | 2011
GrandMasters, LLC, Bellevue, WA
Software Development Consultant | 2010
Belief Networks, Charleston, SC
Senior Software Engineer | 2007 – 2008
Blackbaud, Charleston, SC
Software Engineer | 2005 – 2007
Edfinancial Services, Knoxville, TN
Software Engineer | 2003 – 2005
Intellectual Property Counseling, Litigation, Outsourced "In-House" IP Counsel, Patents: Design, International and Utility, Post-Grant USPTO Proceedings, Startups & Emerging Businesses
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.
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.
Ms. Odems’ practice focuses on intellectual property litigation. She has experience in multiple phases of litigation, including extensive motion practice, taking and defending depositions, working with experts, and engaging in settlement negotiations.
Ms. Odems joined Klarquist as a staff attorney in 2017.
Phelps Dunbar LLP
New Orleans, LA
Associate, 1999 – 2002
Practice focused on 1st Amendment matters, as well as trademark and copyright work.
Cadwalader, Wickersham & Taft LLP
New York, NY
Associate, 1994 – 1998
Practice focused on large scale commercial litigation.
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
Dr. Rohatgi prepares and prosecutes U.S. and foreign patent applications. Since joining Klarquist, he has primarily been working with the Software group, writing applications, and prosecuting existing cases. He has also been working with other practice areas on physics-related technologies.
Dr. Rohatgi’s technical expertise includes diverse areas such as organic LEDs and displays, electronics, medical devices, computing equipment, software, wireless communication, and optical networks. Dr. Rohatgi has 14 years industry experience, as well as six years experience in university and national laboratory settings.
As a physicist, Dr. Rohatgi was part of the Stanford University team that demonstrated the world’s first visible light Free-Electron Laser, and spent another three years at Lawrence Livermore National Labs developing a positron-electron collision experiment. Subsequently, he spent 14 years developing commercial electronics and associated software and firmware. Dr. Rohatgi’s projects have included a 200 MHz RF Lock-in Amplifier and a 60 GHz point-to-point radio. He has also been part of start-up teams developing medical devices, including a whole body PET scanner and a fiber optic probe for coronary arteries.
Global OLED Technology (GOT), Herndon, VA | 2012 – 2016
Technology, Patents, and Licensing (TPL), Dolyestown, PA | 2006-2012
Medeikon Corporation, Ewing, NJ | 2005 – 2006
PhotoDetection Systems, Acton, MA | 2001 – 2005
SierraCom, Hopkinton, MA | 2000 – 2001
PMC Beta, Natick, MA | 1999 – 2000
Stanford Research Systems, Sunnyvale, CA | 1992 – 1997
Lawrence Livermore National Laboratory, Livermore, CA | 1989 – 1992
Stanford University, Stanford, CA | 1986 – 1989
Dr. Rohatgi is listed as inventor on six U.S. patents
Intellectual Property Counseling, 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):
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:
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, copyright infringement suits, 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.
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.