Klarquist » J. Christopher Carraway

J. Christopher Carraway

Partner

Portland Office

503.473.0818 [email protected]

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Overview

Since 1995, Chris has focused his practice exclusively on intellectual property litigation, representing such clients as Amazon, Microsoft, and SAP in patent litigation in federal courts nationwide.

Chris has particular experience litigating patents involving computer software, computer hardware, and e-commerce, as well as defending clients against claims for copyright and trademark infringement. He has argued at numerous claim construction and summary judgment hearings and Federal Circuit appeals. Prior to entering private practice, Chris 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 Chris has recently litigated include California (Northern and Central Districts), Colorado, Florida (Middle District), New York (Southern District), Oregon, Pennsylvania (Western District), Texas (Eastern and Western Districts), and Washington (Western District).

Chris joined Klarquist in 1999 as a lateral associate and became partner in 2003.

Education

J.D. with High Honors, Order of the Coif, Duke University School of Law, 1995
B.S., magna cum laude, Economics, Wharton School of the University of Pennsylvania, 1992

Admissions

Oregon, 1996
Washington, 2006
Montana, 2011
U.S. Supreme Court
U.S. Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the Seventh Circuit
U.S. District Court for the District of Oregon
U.S. District Court for the Eastern District of Texas
U.S. District Court for the Western District of Washington
U.S. District Courts for the Eastern and Western Districts of Wisconsin

Practice Areas

Litigation
Post-Grant USPTO Proceedings

Technologies

Software & Internet Technology
Mobile Devices & Applications
Consumer Products

Languages

French

Professional Activities

Board Past-President, Eagle Mount, Bozeman, Montana
Member, Federal Circuit Bar Association

Clerkships

U.S. Court of Appeals for the Federal Circuit | Law clerk to the Honorable William C. Bryson, 1995 — 1996 | Washington D.C

Honors & Awards

IAM Patent 1000: World’s Leading Patent Professionals | 2021 – 2025

Presentations & Publications

“2020 Patent Law Review,” Oregon State Bar, Feb. 19, 2021
“TC Heartland Decision: Impact on Patent Litigation Landscape Explored,” The Knowledge Group Webcast, January 31, 2018
Claiming Strategies In View of Evolving Damages Law, AIPLA 2016 Electronic & Computer Patent Law Summit, Portland, OR, June 14, 2016
IP Overview Told Through Football Stories, Western MT Bar Ass’n, Missoula, January 21, 2016
Patent Reform Issues for Universities, AUTM Western Region Meeting, Seattle, October 2, 2014
“Discovery Issues in Patent Litigation,” Practicing Law Institute (PLI), Patent Litigation 2006, 2007, 2008, 2009, 2010
“Important Patent Cases of 2008,” Oregon State Bar’s 2009 Intellectual Property Year in Review Seminar, March 12, 2009
“Reexamination of U.S. Patents: An Alternative (or Supplement) to Litigation,” Chartered Institute of Patent Attorneys (CIPA), London, UK, February 13, 2008
“Markman Strategies for the Defense Perspective,” Law Seminars Int’l, San Francisco, January 9, 2008
“Why Web Site Operators Must Comply with the Patent Marking Statute and How They Can Do So,” IPL Newsletter (ABA), Winter 2006
“In the Wake of Knorr-Bremse: Opinions of Counsel are as Important as Ever,” Practicing Law Institute (PLI), Patent Litigation 2005
“Practice Before the U.S. Court of Appeals for the Federal Circuit,” Oregon Intell. Prop’y Law Ass’n, April 2004
“A Preview of Willfulness Law After the Federal Circuit’s Knorr-Bremse Opinion,” Oregon State Bar, Intell. Prop’y Section, May 2004
“The Uncertain Future of Enforcing Patents Broadened through Reissue,” 8 Federal Circuit Bar Journal 63 (1998)
“Offer to Sell Amendment Expands Forum Options for Patent Infringement Actions,” National Law Journal, Jan. 26, 1998 at C8
“Color as a Trademark Under the Lanham Act,” 57 Law & Contemp. Probs. 243 (Autumn 1994).

Articles Authored

“7 Things to Think About After TC Heartland,” Law360, Co-author May 31, 2017
“International Protection for Trademarks Is Now Easier Under the Madrid Protocol,” Multnomah Lawyer, May 2004

Representative Cases

Over the last few years, Chris has served as lead counsel on the following patent litigation cases (represented party underlined):

Johnson v. Amazon.com, Inc. and Megan Pete (W.D. Wash.): In suit asserting violation of Washington Personality Rights Act and intentional infliction of emotional distress based on Amazon Prime Day advertisement, helped client Amazon win motion to dismiss complaint with prejudice.
Pure Earth Botanic, LLC v. Amazon.com, Inc. et al. (N.D. Ga.): In suit alleging infringement of Ketomelt (and design) trademark, helped Amazon secure dismissal of complaint with prejudice because it constituted a forbidden “shotgun pleading.”
Clemons v. Amazon.com (M.D. Fla.): In case asserting trademark infringement and violation of Florida right of publicity statute, removed case to federal court and moved to dismiss based on statute of limitations, prompting Plaintiff to dismiss with prejudice.
Cohen v. Amazon.com (W.D. Pa.): In trademark case involving self-tanning products, won motion to dismiss for client.
Flygrip v. Amazon.com (W.D. Tex., D. Colo., Fed. Cir.): Leading defense in case relating to PopSockets devices. After district court denied transfer, won mandamus from the Federal Circuit ordering transfer from Waco, Texas to Colorado (2022 WL 17688072). After transfer, case was stayed pending the conclusion of a declaratory judgment suit filed by PopSockets.
Best Buy Co., Target Corp., Walmart, Inc. v. Driessen (PTAB, Fed. Cir.): Successfully led inter partes review of patent regarding electronic product purchasing system. The PTAB canceled all claims, and the Federal Circuit affirmed.
Kewazinga v. Microsoft (S.D.N.Y.): Led defense team in case relating to Streetside mapping technology. After Microsoft won partial summary judgment of no infringement and no damages and exclusion of Plaintiff’s damages expert opinion, case resolved.
Big Baboon Inc. v. SAP (N.D. Cal., Fed. Cir.): Successfully led defense team for SAP in case involving enterprise resource planning software. Won motion to dismiss requiring plaintiff to name accused product, then won summary judgment of invalidity that the SAP product plaintiff accused was prior art to the asserted patent (2019 WL 1791421), then won an award of $188,000 in attorney fees for SAP (2019 WL 5102644). Decisions were affirmed on appeal.
Big Baboon Inc. v. Hewlett-Packard (C.D. Cal.): Led defense team for Hewlett-Packard in multi-defendant case involving database systems for end-to-end B2B commerce. Litigation was stayed after Klarquist filed reexaminations on both patents. After all asserted claims were canceled by the PTO, the Court dismissed the case with prejudice.
Mira Advanced Tech. Sys., Inc. v. Microsoft (N.D.W.V.; PTAB; Fed. Cir.): Successfully led defense of Microsoft in case involving Cortana reminder functionality. Litigation was stayed pending inter partes reviews, in which the PTO canceled all claims and the Federal Circuit affirmed. Litigation was then dismissed with prejudice.
Grupo Bimbo v. Snak King Corp. (C.D. Cal.): Defended Snak King against large Mexican corporation asserting trademarks, trade dress, and patents related to rolled tortilla chips. After Snak King won claim construction on key patent claim terms and after Court held hearing on trademark abandonment summary judgment motion, parties reached favorable settlement.
IXI Mobile v. Microsoft et al. (E.D. Tex.): Led defense of Microsoft in case involving Cortana natural language processing. Case dismissed after successful inter partes review.
DietGoal Innovations, LLC v. Bravo Media, LLC, NBC Universal, Time Inc., & Meredith Corp.(E.D. Tex., S.D.N.Y., Fed. Cir.): Led defense team for clients against patent related to meal planning software. Successfully obtained transfer of cases from E.D. Tex. to S.D.N.Y. and blocked plaintiff’s efforts to consolidate cases before multi-district litigation panel. Filed and won motion for summary judgment that asserted patent is invalid under 35 U.S.C. § 101. See 33 F.Supp.3d 271 (S.D.N.Y. 2014). Successfully defended summary judgment before Federal Circuit, which issued a summary affirmance. See 599 Fed. Appx. 956 (Fed. Cir. 2015).
CyberFone v. LinkedIn, NBA, NFL, Netflix, Skype, Twitter, Yelp, et al. (D. Del., Fed. Cir.): Led defense team for group of eight clients in case relating to processing and forwarding of transaction data. Obtained early summary judgment that the asserted patent was invalid pursuant to 35 U.S.C. § 101 for failing to claim patentable subject matter. See 885 F. Supp. 2d 710 (D. Del. 2012). Judgment was affirmed on appeal. See 2014 WL 718153 (Fed. Cir. 2014).
Metasearch Systems, LLC v. Priceline.com, Travelocity.com, Expedia, Orbitz, & American Express (D. Del.): Defended group of clients against patents related to metasearching. Case was stayed pending result of covered business method patent reviews instituted by the Patent Trial & Appeal Board, which found all claims unpatentable, resulting in dismissal of the lawsuit.
Soverain Software v. eBay, PayPal, & GSI Commerce (E.D. Tex.): Defended clients in case involving online shopping carts and other e-commerce concepts. Won summary judgment that all remaining asserted shopping cart claims are invalid as obvious. Case was subsequently dismissed.