Klarquist » Derrick W. Toddy

Derrick W. Toddy

Partner

Portland Office

503.473.0827 derrick.toddy@klarquist.com

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Overview

Derrick’s practice encompasses advising and assisting clients during all phases of the patent life cycle, from prosecution strategy and freedom to operate analyses, to litigation and “alternatives to litigation” such as USPTO post-grant proceedings, to patent acquisition, licensing, and settlement.

Leveraging his skill as both a registered patent attorney and experienced patent litigator, Derrick has prosecuted and litigated patents in mechanical and software-related fields. Representative clients span multiple industries, including technology companies Microsoft, SAP, and Amazon, sports equipment manufacturer Taylor Made Golf, and medical device manufacturers Dexcom and Edwards Lifesciences. Derrick has represented clients in intellectual property disputes in district courts nationwide, from California to Massachusetts to Puerto Rico, and points in between, and on appeal to the Federal Circuit.

Derrick also has extensive experience in preparing and defending inter partes reviews, reexaminations, and other USPTO post-grant proceedings, routinely arguing before the Patent Trials and Appeal Board (PTAB).

Derrick joined Klarquist as a lateral associate in 2006, and became partner in 2019.

Education

J.D., James Kent Scholar, Harlan Fiske Stone Scholar, Columbia University, 2004
Post-graduate coursework in Computer Science, Oregon State University, 2015
B.S., Philosophy and Literature, Engineering Sequence in Information Systems Engineering, Dean’s List, United States Military Academy (West Point), 1995

Admissions

Oregon, 2007
California, 2004
U.S. Patent and Trademark Office, 2016 (Reg. No. 74,591)
U.S. Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the Ninth Circuit
U.S. District Court for the Northern and Central District of California
U.S. District Court for the District of Oregon
U.S. District Court for the Eastern District of Texas

Practice Areas

Post-Grant USPTO Proceedings
Litigation
Intellectual Property Counseling
Patents

Technologies

Software & Internet Technology
Mechanical

Professional Experience

Morgan Miller Blair | Associate, 2005 – 2006 | Walnut Creek, CA
Quinn Emanuel Urquhart & Sullivan | Associate, 2004 – 2005 | San Francisco, CA
U.S. District Court for the Eastern District of New York | Judicial Extern to Hon. Jack Weinstein, 2003 | Brooklyn, NY

Representative Cases

Over the past decade, Derrick 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 many cases in PTO and/or PTAB proceedings:

ADC v. Microsoft Corporation (W.D. Wash.): Patent infringement litigation and related PTO reexaminations involving online distribution of videos and software.
Anascape v. Microsoft Corporation (E.D. Tex.): 12-patent litigation and related PTO reexaminations involving various technical aspects of Xbox® game controllers.
Big Baboon v. Hewlett-Packard (C.D. Cal.): Multi-defendant patent litigation case and related PTO reexaminations involving database systems for end-to-end B2B commerce.
Canatelo v. Avigilon (P.R.): Patent infringement suit related to video surveillance technology.
Meynard Designs v. Earth Products, Inc. (D. Mass.): Trademark infringement suit related to use of the mark “earth” on clothing.
Hawk Technology v. Avigilon, Costco, Burlington Coat Factory, NBC Universal et al. (S.D. Fla., M.D. Fla.): Series of patent cases relating to video surveillance technology.
Interval Licensing v. eBay, Netflix, Office Depot, Staples et al. (W.D. Wash.): Patent infringement litigation and related PTO reexaminations involving recommendation functionality on web commerce sites.
Microsoft Corporation v. WebXchange (D. Del., N.D. Cal.): Declaratory judgment actions and related reexaminations related to patents on facilitating online network transactions.
Optimize v. Dillard’s, Drugstore.com, J.C. Penney, Staples et al. (E.D. Tex.): Patent infringement litigation related to recommendation technology on web commerce sites.
Reiffin v. Microsoft Corporation (N.D. Cal.): Patent infringement litigation and Federal Circuit appeal concerning multithreading operating system technology.
RMail Limited v. Amazon.com, PayPal (E.D. Tex.): Multi-defendant patent infringement suit and related PTO reexaminations related to online transmission of secure messages.
SAP v. Wellogix, (S.D. Tex.): Patent infringement litigation and related PTO reexaminations involving project management software.
Taylor Brands v. Columbia River Knife and Tool (E.D. Ten.): Patent infringement suit and Federal Circuit appeal related to assisted opening knives.
TQP v. Adobe, British Airways, Costco, Intuit, LinkedIn, Travelocity.com, Twitter, Yelp, and Zones (E.D. Tex.): Series of patent infringement cases involving encryption patent that Plaintiff asserted against the ubiquitous use of RC4 with SSL/TLS with various secure websites.
VStream v. Nokia et al. (E.D. Tex.): Patent infringement suit related to compression and decompression of images on “smart” devices.