Klarquist » John D. Vandenberg

John D. Vandenberg

Partner

Portland Office

503.473.0853 john.vandenberg@klarquist.com

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Overview

For 35 years, John has been litigating patents around the country for technology clients including Microsoft, SAP, ETAP, Nautilus, and Mentor Graphics.

Supreme Court and Courts of Appeals: John has argued more than 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: John 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: John has been lead counsel in Patent Office trial proceedings.

Patent-Law Training and Advocacy: Since 2004, John 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.

John joined Klarquist in 1989 as an associate and became partner in 1991.

Education

J.D., Order of the Coif, New York University School of Law, 1983
B.S.E., cum laude in Mechanical and Aerospace Engineering, Princeton University, 1979

Admissions

Oregon, 1989
Washington, 2006
U.S. Patent and Trademark Office, 1984 (Reg. No. 31,312)
U.S. Supreme Court
U.S. Court of Appeals for the Federal, Second, Fifth, Ninth, and Eleventh Circuits
U.S. Court of Federal Claims
U.S. District Court for the Eastern District of Michigan
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 Washington

Practice Areas

Litigation
Post-Grant USPTO Proceedings

Technologies

Software & Internet Technology

Professional Experience

Pratt & Whitney Aircraft
East Hartford, Connecticut
Engineer, jet engine development

Professional Activities

Vice Chair, Federal Circuit Bar Association, PTAB – TTAB Committee
Former Vice Chair, Federal Circuit Bar Association, Patent and Trademark Office Committee
Former President, Seattle Intellectual Property American Inn of Court

Honors & Awards

2006 – 2019 Oregon Super Lawyers^®
2010 – 2019 Ranked in Chambers USA, Oregon, Intellectual Property
2014 – 2017 IAM Patent 1000: The World’s Leading Patent Professionals
2014, 2015 IP Stars, Managing IP Magazine
2014 BTI Client Service All-Star

Presentations & Publications

“Weakening Alice Will Weaken the U.S. Patent System’s Second Engine of Innovation.” IP Watchdog, 6/19/2019.
Testimony to the Subcommittee on Intellectual Property, Committee on the Judiciary, United States Senate, Subcommittee Hearing, “The State of Patent Eligibility in America: Part III,” Dirksen Senate Office Building 226, 6/11/19
“Using a Phillips Construction in all PTAB Trials: The Impact on District Court Patent Actions and PTAB Proceedings.” 18 Chi. -Kent J. Intell. Prop. 1 (2019) (coauthor)
“Comments on 2019 Revised Patent Subject Matter Eligibility Guidance,” United States Patent and Trademark Office, 3/6/19
“Phillips Construction in PTAB Trials: Strategies for Petitioners and Patent Owners” (panel discussion moderator), Federal Circuit Bar Association, 12/3/18 [link to audio]
“Drafting (and Invalidating) Patent Claims as a Sec. 112 Master: How Claims, Hollow Claims, Ways and Means,” Washington State Patent Law Association, 9/19/18
“Supreme Court Review,” Federal Circuit Bar Association’s Bench and Bar Conference (panelist with Judge Timothy B. Dyk and other appellate practitioners), 6/23/18
“Functional Claiming: Draft Some Claims to Survive in 2028,” Oregon State Bar Intellectual Property Section, 6/6/18
“Patent Indefiniteness,” Patent Law Class Lecture, University of Washington School of Law, 10/24/17
“The Constitutionality of IPRs: The Supreme Court Set to Rule” (panel discussion), Center for Advanced Study & Research on Innovation Policy 2017 Patent and Intellectual Property Law Summer Institute, University of Washington School of Law, 7/20/17
“Functional Claiming: New Traps for Prosecutors / Opportunities for Litigators, Under Williamson and Nautilus,” Center for Advanced Study & Research on Innovation Policy 2017 Patent and Intellectual Property Law Summer Institute, University of Washington School of Law, 7/19/17
“7 Things to Think About After TC Heartland.” Law360, March 2017 (subscription required).
“Patent Litigation 2017: The Courts and Patent Trial and Appeal Board,” Panelist on Appellate Practice, Santa Clara University School of Law, 2/17/2017
“Patent Defenses: Getting More Out of the Specification, Prior Art & Markman” (Cleveland Intellectual Property Law Association CLE, Cleveland, OH, 10/27/2016)
Section 101 Preemption: Amici Brief filed in U.S. Court of Appeals for the Federal Circuit in McRO, Inc. v. Bandai Namco Games America, 10/26/2016 (John D. Vandenberg, Salumeh R. Loesch)
Law360, “We Need Another Phillips to Explain ‘Plain Meaning.” Law360, August 2016.
“The Supreme Court Review 2016” (Federal Circuit Bar Association’s 2016 Bench and Bar Conference, Nashville, TN, 6/24/2016)
“Panel with Chief Judge Mosman: Patent Litigation in 2016” (The Novice to the Pro, Portland, Oregon, 2/23/2016)
“Advanced Tips for Patent Prosecution and Litigation” (San Jose technology companies’ offices, 2/10/2016)
“The PTAB Matures: Precedential Impact of Decisions, Procedural Aspects of CAFC Reversals, and The Public Role in Key Decisions” (Federal Circuit Bar Association, Washington, DC, 1/15/2016)
“Tips for Patent Prosecution and Litigation Based on Recent Decisions” (Washington State Patent Law Association, Seattle, WA, 11/18/2015)
“Patents and Patent Litigation: Develop, Strengthen, and Protect Your Intellectual Property” (Electronic Design Automation Consortium, San Jose, CA, 10/29/2015)
“Tips for Patent Prosecution and Litigation Based on Recent Decisions” (Oregon Patent Law Association and Oregon State Bar IP Section, Portland, OR, 10/1/2015)
“Particularly Pointing Out And Distinctly Claiming”: What’s Next For The Patent Act’s “Clarity And Precision Demand” Post Nautilus and Williamson? (2015 American Bar Association Annual Meeting, Chicago, IL, 7/31/2015)
“Using Patents to Curtail Climate Change: A Proposal.” Law360, February 2015.
“Nautilus: Watershed or Non-event?” (Oregon State Bar IP Section Annual Meeting, Portland, OR, 10/8/2014)
Panelist at the Supreme Court IP Review regarding “Nautilus v. Biosig Instruments: Patent indefiniteness” (Illinois Institute of Technology Chicago-Kent College of Law, 9/12/2014)
Panelist at United States Patent and Trademark Office’s “Software Partnership Meeting: Functional Claiming and Clarity of the Record,” (Alexandria, VA, 7/22/2014)
“PTAB Roundtable Panel Discussion” (Patent Trial and Appeal Board, Seattle, WA, 5/01/2014)
“A Discussion on Nautilus v. Biosig” (Federal Circuit Bar Association, The Patent and Trademark Office Committee, 4/29/2014)
“Patent Strategies after the America Invents Act (AIA)” (Law Seminars International, Portland, OR, 1/30/2012)
“Immediate and Near-Term Practical Impacts of the America Invents Act” (Oregon State Bar Intellectual Property Law Section, Oregon State Bar Computer and Internet Law Section, and Oregon Patent Law Association, Portland, OR, 12/7/2011)
Immediate and Near-Term Practical Impacts of the America Invents Act, December 2011
Panel with Judge William C. Bryson (Lewis & Clark Law School, 10/6/2011)
“Immediate Impacts of Patent Reform, What You Need to Know Now About the America Invents Act” (Law Seminars International, Portland, OR, 10/6/2011)
“Will Courts Follow the Supreme Court or the Federal Circuit?” (TexasBarCLE’s 7th Annual Advanced Patent Litigation Course, San Antonio, Texas, 7/15/2011)
Commentary on ITC Ruling on Android Patents, July 2011
“Is Research Corp. Tech. v. Microsoft an Outlier or the Future of Patent Law Sec. 101?” (OSB Computer & Internet Law Section, Portland, OR, 2/22/2011)
“Patent Law New Developments and Year in Review: Cases, Trends and Revelations” (Oregon State Bar’s Intellectual Property Review – Updates and Changes from 2010 Seminar, Tigard, OR, 1/21/2011)
Tips For Winning More Defenses In Markman, July 2009
“In re Bilski: What Can You Patent Now?” (Joint Meeting of Oregon Patent Law Association & OSB Computer & Internet Law Section, Portland, OR, 12/11/08)
“Patent Claim Construction Strategies for Defendants” (Patent Claim Construction Workshop, Law Seminars International, Seattle, WA, 7/10/07 & Supp., 7/16/08)
“When Does a U.S. Patent Cover ‘Infringement’ Occurring Abroad?,” The Licensing Journal, Vol. 27, No. 8, Pgs. 13-20, September 2007 (John D. Vandenberg, Scott E. Davis)
When Does a U.S. Patent Cover “Infringement” Occurring Abroad?, September 2007
“Microsoft v. AT&T: The Foreign Reach of U.S. Patents” (Complex Intellectual Property Licensing Conference, Law Seminars International, Philadelphia, PA, 6/21/07)
Export Patent Infringement (35 USC § 271(f)): Amici Brief filed in U.S. Supreme Court in AT&T v. Microsoft, January 2007 (John D. Vandenberg, Jeffrey S. Love)
“What Good Is a Judgment of Patent Infringement?: 2005-06” (Pre-Complaint & Post-Trial Patent Litigation Strategies Workshop, Law Seminars International, Seattle, WA, 7/11/06)

Representative Cases

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

Power Analytics Corporation v. Operation Technology, Inc., Case Nos. 18-1428 (Fed. Cir.), 16-cv-01955 (C.D. Cal.), 16-cv-00177 (D. Del.): Won summary affirmance at the U.S. Court of Appeals for the Federal Circuit of the invalidation of 138 claims in four patents in the field of modeling electrical systems. The Court in the Central District of California found all claims invalid under the abstractness exclusion to patent eligibility under § 101 of the Patent Act.
E-System Design, Inc. v. Mentor Graphics Corp., Case No. 17-cv-682 (E.D. Tex.): Represented EDA company in which the Court in the Eastern District of Texas invalidated all claims against the client based on the more stringent “reasonable certainty” test for claim indefiniteness. This stricter standard was established by the Supreme Court in Nautilus Inc. v. Biosig Instruments Inc., where Klarquist had successfully represented Nautilus.
Biosig Instruments, Inc. v. Nautilus, Inc., Case No. 13-369 (S. Ct.): Argued before the United States Supreme Court to reject the Federal Circuit’s lenient standard for definiteness. The Supreme Court unanimously held that the standard for definiteness applied by the Federal Circuit was too liberal. And it articulated that patent claims are indefinite if “read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” The asserted patent involved heart rate monitor technology.
Synopsys, Inc. v. Mentor Graphics, Inc., Case No. 12-cv-06467 (N.D. Cal.): Represented EDA company in competitor multi-patent litigation. Argued and won partial summary judgment of patent invalidity under Section 101.
Metasearch Systems, LLC v. Priceline.com, Travelocity.com, Expedia, Orbitz, & American Express, Case Nos. 12-cv-01188, 12-cv-01189, 12-cv-1190, 12-cv-01191, 12-cv-01223, 12-cv-01225 (D. Del.): Defended group of on-line travel companies against seven patents related to metasearching. Successfully argued Covered Business Method patent review trials instituted by the Patent Trial & Appeal Board, which found all claims unpatentable, resulting in dismissal of the lawsuit.
A Pty LTD v. eBay, et al., Case No. 15-cv-00155 (W.D. Tex.): Represented eBay on case involving email communication systems. The complaint was dismissed on a Rule 12 motion, as the Court found the asserted patent invalid as claiming unpatentable subject matter, under Section 101.
Grupo Bimbo S.A.B. de C.V., et al. v. Snak King Corp., et al., Case No. 13-cv-02147 (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 certain trademark issues, parties reached favorable settlement.
Realtime Data LLC d/b/a IXO v. SAP America, Inc., Sybase, Hewlett-Packard, & Dell, Case No. 15-cv-00469 (E.D. Tex.): Defending SAP and Hewlett-Packard in multi-patent case involving data compression.
Big Baboon Inc. v. Hewlett-Packard, et al., Case No. 09-cv-01198 (C.D. Cal.): Representing Hewlett-Packard in multi-defendant multi-patent case involving database systems for end-to-end B2B commerce. Litigation was stayed after Klarquist filed reexaminations on both patents.
Research Corporation Technologies v. Microsoft Corp., Case No. 01-cv-0658 (D. Ariz.): Defended Microsoft against six asserted patents regarding halftoning technology, including at trial.
Anascape Ltd. v. Microsoft Corp., et al., Case No. 06-cv-00158 (E.D. Tex.): Represented Microsoft in multi-patent litigation involving Xbox® game controllers, winning partial stay pending reexams and partial summary judgment of non-infringement and no willful infringement (see 2008 WL 7182476).
Sklar v. Microsoft Corp., Case No. 06-cv-00007 (E.D. Tex.): Defended Microsoft in case relating to Windows® operating system user interface features.
Network Commerce v. Microsoft Corp., Case Nos. 01-cv-01991 (W.D. Wash), 04-1445 (Fed. Cir.): Led defense team for Microsoft and won summary judgment of non-infringement regarding patents relating to online media distribution. Successfully defended the summary judgment win on appeal. See 422 F.3d 1353 (Fed. Cir. 2005).

John also has been lead counsel on more than a dozen Patent Office proceedings, including reexaminations, inter partes reviews, and covered business method patent reviews.