Litigation Attorney Lainie Block Rejoins Kolisch Hartwell
October 1, 2008—We’re pleased to welcome Lainie Block back to Kolisch Hartwell as an intellectual property litigation attorney. Originally with us in 2001, Lainie left to join a business-litigation practice—and has now returned to focus on IP litigation. As a trial attorney, Lainie has sucessfully represented local, regional, and international clients in cases involving unfair competition, trade-secret misappropriation, and in contractual disputes. She has also argued many cases on appeal, both in private practice and as a former Assistant Attorney General. We’re delighted to have Lainie here again and extend her a warm welcome back.
Joseph Mohr Teaching Copyright Law at Willamette University
August 26, 2008—Kolisch Hartwell intellectual property attorney Joey Mohr is teaching Copyright Law this fall at the Willamette University College of Law. Mohr’s syllabus includes common law and statutory requirements, registration procedures, protected rights, licensing, enforcement, and infringement. The class also covers the Digital Millennium Copyright Act and other computer- and Internet-related copyright law topics. Mohr’s appointment as Adjunct Professor at Willamette University draws from his professional practice in intellectual property law. Mohr will continue to teach engineering coursework at the Oregon Institute of Technology. The Willamette University course was previously taught by Kolisch Hartwell attorney John McCormack.
Lewis & Clark Intellectual Property Alumna Lauds John McCormack
August 26, 2008—John McCormack, Of-Counsel with Kolisch Hartwell, was recently the subject of kind words from his former student Kelly Luzania. As a featured alumna of the Intellectual Property Law Program at Lewis & Clark, Luzania says on its website "My favorite course in law school was Trademark Law (surprise!). Adjunct Professor John McCormack brought such a fun and practical perspective on the topic, and I was hooked." Luzania, a 2006 graduate, is now in professional practice at Davis Wright Tremaine LLP. John, who has a long history of teaching IP law at all three law schools in Oregon, treasures seeing his students thrive in their IP careers, and thanks Kelly for her gracious comments.
Elizabeth Tedesco Teaching Patent Law at the University of Oregon
August 19, 2008— Kolisch Hartwell senior associate Elizabeth Tedesco is teaching Patent Law and Policy this fall at the University of Oregon School of Law. Her three-credit class starts August 19, 2008 and discusses developments in patent law, including patentable subject matter, requirements for patentability and infringement, the process of enforcing and obtaining a patent, and contemporary controversies in patent law. Elizabeth’s appointment as Adjunct Instructor continues a Tedesco family tradition. Her father, Mike Tedesco, has been teaching labor law and arbitration at the University of Oregon law school since 2002. Her appointment also continues the firm’s tradition of teaching intellectual property at the University of Oregon. Pete Heuser and John McCormack previously taught courses in patent law, trade secrets, licensing and international business transactions at the law school.
Walt Karnstein Featured in American Bar Association Law Practice Magazine
July 30, 2008—Kolisch Hartwell partner Walt Karnstein is in the summer spotlight thanks to the July/August issue of Law Practice magazine, which features a Frontlines interview titled “Five Minutes with ... Walt Karnstein.” Law Practice sought out Walt to discuss his expanding international practice—and in particular, how he uses technology to enable a truly global practice. Walt represents intellectual property clients in the U.S., of course, but also in Europe and Asia. Last year, for instance, Walt spent more than a month in China working with one of our Chinese clients, and is currently directing European litigation on behalf of that client. Given his Blackberry, an Internet feed, and a bold jolt of coffee, Walt could be just about anywhere these days—or for that matter, just about everywhere.
Partner Pete Heuser Testifies in Patent Trial
June 25, 2008—Pete Heuser testified as an expert witness in the case of CollegeNet v. XAP, a patent-infringement case in the U.S. District Court for the District of Oregon dealing with automated college-application systems. After CollegeNet obtained a patent and began enforcement proceedings against its competitors, several accused infringers argued that CollegeNet committed inequitable conduct by violating its duty of disclosure to the Patent Office during the patent-examination process. Heuser testified about recent Federal Circuit opinions, noting that to prevail on the inequitable-conduct defense requires a clear and convincing showing that those involved with the patenting process intended to deceive the patent examiners. He also testified about rule changes in the Patent Office that relaxed the disclosure required of applicants. A decision is expected later this year.
Kolisch Hartwell Welcomes Marta Schenck as Summer Apprentice
June 11, 2008—Marta Schenck has joined Kolisch Hartwell this summer as an intellectual property apprentice. Marta, who will be a senior this fall at Grant High School here in Portland, comes to us through our ongoing participation in the Apprenticeships in Science and Engineering (ASE) program, which matches a select group of high school students with technology-based companies. Kolisch Hartwell continues to be the only law firm participating in this statewide program. Welcome Marta!
Kolisch Hartwell Settles WATERSHED Trademark Case On Highly Favorable Terms
June 5, 2008—Kolisch Hartwell client Watershed, Inc. has successfully enforced an infringement of its trademark in the WATERSHED mark. The defendant Boston Harbour Inc. had used the WATERSHED trademark on a variety of goods and had countersued Watershed, Inc., alleging that Boston Harbour had superior rights to the mark. The case settled with Boston Harbour taking a royalty-bearing license on a narrow range of goods, but agreeing not to use the WATERSHED mark on other goods and in other markets, and acknowledging that Watershed, Inc. owned valid rights to the trademark.
John McCormack Speaks to Patent Attorneys about Patent Drafting, Prosecution, and Litigation
June 5, 2008—John McCormack taught a session in Glendale, California at a workshop titled “How to Craft, Draft, and Prosecute Patents That Win at the Federal Circuit.” John was an invited speaker at the four-day workshop, held by the Patent Resources Group and open only to patent practitioners. The workshop discussed how to draft and prosecute patent applications to gain the broadest possible protection for clients while simultaneously maximizing the strength of the patent if litigated.
Steve Hudnut Sees His Work Reach Mars with the Phoenix Mars Lander
May 26, 2008—The successful landing of the Phoenix Mars lander has a personal meaning for Kolisch Hartwell attorney Steve Hudnut—who, after a twelve-year wait, finally saw his work on another planet. While working for Lockheed Martin in the 1990s, Steve designed various parts for the Mars Polar Lander, including its bowl-shaped feet. Unfortunately, the Mars Polar Lander apparently crashed in the Martian South Polar Region in 1999. As its name suggests, the Phoenix lander revived the goals of the Mars Polar Lander and reused parts of Steve´s design, including its feet. Steve naturally followed the Phoenix program with a great deal of interest and was delighted when it touched down safely on May 25, 2008. He was even more delighted when the front page of the Oregonian carried a picture of “his” feet sitting solidly on Martian soil. After his stint as a rocket scientist, Steve went to law school in Seattle, became a patent attorney, and joined Kolisch Hartwell in 2004.
Kolisch Hartwell Welcomes Cassidy Birtley as Summer Law Clerk
May 22, 2008—Kolisch Hartwell has selected Cassidy Birtley, who has just completed his second year at the University of Oregon School of Law, as a 2008 summer law clerk. Cassidy combines his interest in patent and trademark law with his education and experience as a mechanical engineer. Before law school, Cassidy designed structural aluminum castings for heavy-duty truck applications. He has also been responsible for developing and testing airbags and airbag sensors for protection during side and rollover impacts. Kolisch Hartwell has a long tradition of offering summer clerk positions and mentoring those seeking careers in intellectual property law. Welcome aboard, Cassidy!
Three Kolisch Hartwell Employees to Attend Law School
May 08, 2008—Three Kolisch Hartwell employees have been admitted to law school and plan to start their studies the fall of 2008. Laura Westin will attend Lewis & Clark Law School to focus on immigration law, where she can take advantage of her fluency in Spanish acquired by living a year in Ecuador. Jayme Pierce will attend the University of Oregon School of Law to focus on environmental law and water rights. She hopes to practice in Oregon and Washington to help resolve natural resource and agricultural conflicts surrounding water and its use. Rhett Tatum, who will attend Georgetown University Law Center to study election law, has recently published an article in Regulation and Governance titled “Wheat from Chaff: Third-Party Monitoring and FEC Enforcement Actions.” We’ve always encouraged our employees to pursue the legal profession, and we’re very proud of Laura, Jayme, and Rhett.
Kolisch Hartwell Wins Stay in Patent Case
April 24, 2008—Kolisch Hartwell and its client VeriFone, Inc. have won a stay of a patent infringement case brought against VeriFone in the Eastern District of Texas by Spa Syspatronic, AG. Kolisch Hartwell attorneys attacked the validity of the patent-in-suit by filing a reexamination request in the U.S. Patent and Trademark Office (PTO), which granted the request. The Court granted the stay due to the reexamination and its potential for saving litigation costs by instead putting the burden back on the patent owner in the PTO. The decision will be significant for future litigants in the Eastern District of Texas as precedent for granting stays in such cases.
Joey Mohr Teaches Heat-Transfer Theory, Emphasizing Energy Efficiency
April 23, 2008—Patent attorney Joey Mohr is teaching Heat-Transfer Theory and Applications this spring at the Oregon Institute of Technology (OIT). OIT, where Mohr is an Adjunct Professor, offers the nation's first four-year undergraduate program in renewable-energy systems. Mohr’s class, part of the core curriculum, has 15 students this term. “The ability to manage heat,” says Mohr, “is an important tool that future engineers need for developing the next generation of energy-efficient devices, structures, and systems.”
U.S. District Court Blocks USPTO Restrictions on Claims and Continuations
April 1, 2008—In the case of Tafas v. Dudas, the U.S. District Court for the Eastern District of Virginia enjoined new patent rules that would have regulated the number of claims in U.S. patent applications and limited the number of follow-on applications. In granting a summary judgment, the court held that the U.S. Patent and Trademark Office (PTO) exceeded its power by issuing rules that limited the substantive rights of applicants.
The new PTO rules, published in August 2007, have been controversial because they would have significantly changed U.S. patent practice. The rules imposed a burden on applications with more than 5 independent claims or 25 total claims. The rules would have also made it difficult and expensive to file more than two “continuation” applications, which use the specification of a previously filed application to support new claims. These changes were designed to simplify prosecution and eliminate the practice of keeping applications alive indefinitely. Today’s decision, barring reversal on appeal, significantly reduces the chance that the new rules will take effect in their current form.
J. Pierre Kolisch, Our Founder, Passes Away at 89
March 1, 2008—J. Pierre Kolisch, the founder of our firm, passed away March 1, 2008. He was 89. For more than 50 years, continuing into the past year, Pierre maintained an active legal practice in our Portland office. Born in New York City on March 28, 1918, he graduated from Cornell Law School in 1942, served his country in World War II, and joined his father’s patent firm in New York City in 1946. In 1952, Pierre moved to Portland and started his own firm—which grew to what is now Kolisch Hartwell, P.C. He was recognized throughout the state and the nation as one of the premier patent and trademark litigators. He achieved the rare distinction of arguing patent cases before the United States Supreme Court. He was the Honorary French Counsel to Oregon for many years, President of the Oregon Symphony, and a member of the Board of Directors of the Portland Art Museum. We will dearly miss him as a leader and friend.
Peter Sabido Elected to Board of Asian American Business Alliance
February 14, 2008—Associate Attorney Peter Sabido has been elected to the Board of Directors of the Asian American Business Alliance (AABA). Founded in 2003, the AABA promotes the formation, growth, and prosperity of Asian American businesses in Oregon and Southwest Washington to strengthen the local economy for all residents. Peter has been active in the Portland-based non-profit organization for about a year, and will serve a two-year term on the Board of Directors.
Kolisch Hartwell Helps the Yaw Family Stop Infringement of its Famous Trademarks
February 8, 2008—Kolisch Hartwell has sucessfully negotiated a settlement in a dispute between our client the Yaw family and Mark Lindsay’s Rock and Roll Cafe. Since 1928, the Yaws have operated a series of well-known Portland-area restaurants under the names “Yaw’s” and “Yaw’s Top Notch.” After an agreement to allow use of the Yaws’ trademarks and recipes fell through, Rock and Roll nonetheless began offering an extensive Yaw’s menu section and selling Yaw’s souvenirs—without compensating the Yaw family. As a result, the Yaws retained Kolisch Hartwell. Under the terms of the settlement, Rock and Roll removed all Yaw’s menu items, will no longer display “Yaw’s” or “Top Notch” in its Cafe, websites, or advertising, and will stop selling Yaw’s memorabilia. We look forward to seeing a new Yaw’s Top Notch restaurant opened by the Yaw family in the near future.
Joey Mohr Speaks to Beaverton and Hillsboro Students about Legal Careers
February 8, 2008—Associate Attorney Joey Mohr gave a slide-show talk titled Law as a Career: Nothing Like on TV, but Every Bit as Cool to Washington County high school students as a part of a career fair held at the Capital Center Institute in Beaverton. Joey gave a 20-minute presentation (plus time for questions) to five different groups of 15 to 30 students interested in learning what lawyers do for a living and how to plan for a career in law. Joey contrasted the legal theatrics shown in the media with the broad range of opportunities available for attorneys in the real world.
Chuck DeVoe Takes Part in Rescue Effort
February 4, 2008—On his way into work Monday morning down a winding Portland street, shareholder Chuck DeVoe saw the car in front of him slide off the road and down a wooded embankment. Trained in mountain rescue, Chuck had his 15-year-old son Tanner call 911 while he climbed down to check on the driver. Chuck found the car upside down, about 150 feet below the road. By the time he was able to get down to her, the driver had been able to extricate herself from the vehicle. She was disoriented and slightly injured. Chuck stayed with her and then guided rescue and medical crews down to the vehicle. Chuck was a little late for work that morning, and Tanner had a good story to tell his classmates.
Kolisch Hartwell Expands Website
January 8, 2008—If you’re reading this item, you’ve seen it first hand: www.khpatent.com is bigger and better than ever. We’ve thoroughly redesigned the site, adding new content, new features, and a whole new “look”—all crafted to ease access to information for present clients, future clients, and the IP community. Kudos to Gere Donovan Creative of Portland, Oregon, for their flexible design ideas, speedy implementation, and patience in shepherding a bunch of busy patent attorneys.
Oleg Salakhov Delivers Commencement Speech
December 22, 2007—Oleg Salakhov, who joined Kolisch Hartwell before his graduation from Seattle University School of Law, was chosen by his peers to deliver a commencement speech to the class of 2007. Speaking at his graduation ceremony on December 22, Oleg praised his classmates’ achievements, remembered shared good times, and offered twelve ideas on how to improve public perceptions of the legal profession. We’re happy to welcome Oleg and his family to Portland.
Pete Heuser Elected to Board of Portland Golf Club
December 12, 2007—The members of Portland Golf Club recently elected shareholder Pete Heuser to a three-year term on its Board of Directors. The Board manages all operations of the Club, including operation of the golf course, the dining facilities, the 100-person staff, and all matters affecting the membership of the Club.
Kolisch Hartwell Completes Major Expansion
December 19, 2007—We’re very pleased to announce a 5,200 square-foot expansion of our main office. For essentially our entire 55-year history, we’ve kept our main offices in the historic Pacific Building in downtown Portland, Oregon. We now occupy virtually the entire third floor in addition to the entire second floor. Architect for the project is Group Jake Collaborative Design of Portland, with Fortis Construction as general contractor. Our address remains the same. If you have a chance, please drop by for a visit.
Pete Heuser Speaks to Young Oregon Lawyers
November 14, 2007—Partner Pete Heuser spoke to young lawyers at a conference titled “Learning the Ropes” sponsored by the Oregon State Bar’s Professional Liability Fund on November 14. These programs are an annual event that aim to help young attorneys reduce their liability risks. At the program, Pete lead a discussion about areas of concern to the attendees, and drew on his experience teaching at the University of Oregon Law School as an Adjunct Professor.
Walt Karnstein Addresses Washington, D.C. Conference
November 9, 2007—Partner Walt Karnstein was a member of a panel discussion held at the "Law Firm Marketing Strategies Conference” of the Law Practice Management Section of the American Bar Association in Washington D.C on November 9. His topic, Wasted Time, Wasted Spending, addressed ways to improve the efficiency of spending for business development.
Pete Heuser Named Top 50 Super Lawyer
November 1, 2007—Shareholder Pete Heuser has been voted one of Top 50 attorneys in Oregon, as announced in the November 2007 issue of Oregon Super Lawyers® magazine. To compile the Super Lawyers list, 10,000 Oregon attorneys were invited to nominate the best attorneys they’ve personally seen in action. Out-of-firm votes were given more weight than in-firm votes. Congratulations, Pete.
Walt Karnstein Speaks at Portland Legal Conference
October 26, 2007—Partner Walt Karnstein was on-stage in two sessions of a conference titled “A Day of Ethics and Technology for Government Lawyers” held here in Portland, Oregon on October 26. In one session, titled Back up to Back up: Business Continuity and Disaster Recovery Planning, Walt spoke about data-protection issues. In a second session, Walt was a panelist on technology-expert forum titled 60 Technology Tips in 60 Minutes.
Kolisch Hartwell Settles ITC Dispute
October 15, 2007—Kolisch Hartwell is pleased to announce that its client Kipor Power Co., Ltd., reached a favorable settlement with American Honda Motor Co., Inc., in a proceeding before the International Trade Commission relating to Kipor’s sale for importation of certain portable electronic generators. Under the terms of the settlement, Kipor will be allowed to sell the generators that Kipor is currently manufacturing to its U.S. distributor. Based in China, Kipor is known for developing quality generators and industrial products that are sold in more than 130 countries around the world.
Bryan Beel Joins Kolisch Hartwell
October 1, 2007—We’re pleased to welcome Bryan Beel to the firm as an intellectual property attorney after three years with us as a technical consultant. Bryan worked at Kolisch while completing his coursework at Northwestern School of Law of Lewis & Clark College. He settled in the Portland area after extended stays in Pullman, WA, and Pasadena, CA. His background is in the natural sciences, and he has a Ph.D. in Genetics and Cell Biology from Washington State University. Before joining Kolisch, he spent four years as a postdoctoral fellow in the Division of Biology at the California Institute of Technology.
Nick Thede Joins Kolisch Hartwell
October 1, 2007—We're pleased to announce that Nick Thede has joined the firm as an intellectual property attorney. Nick was a clerk for the firm during the summer of 2006 and is happy to return on a permanent basis. He passed the Oregon State Bar examination earlier this summer after graduating in May 2007 from Franklin Pierce Law Center in Concord, New Hampshire. A native Oregonian, he earned a Bachelor of Science degree in Computer Science from the University of Portland. Nick is registered to practice before the U.S. Patent and Trademark Office.
Oleg Salakhov Joins Kolisch Hartwell
October 1, 2007—Oleg Salakhov is joining the firm after completing his degree at the Seattle University School of Law. Oleg spent the summer clerking for us, and we are pleased that he has decided to join our firm. He hails from Estonia and earned a Bachelor and Master of Science degree in Mechanical Engineering from the State Maritime Academy in St. Petersburg, Russia. Oleg is fluent in Russian and brings the practical technical and business knowledge gained at various companies in marine engineering, import/export management, accounting, purchasing and operations.
John McCormack Continues as Adjunct Professor
September 20, 2007—John M. McCormack, an attorney who is Of Counsel at Kolisch Hartwell, teaches intellectual property courses as an adjunct professor at Willamette University College of Law and the University of Oregon School of Law. This fall, John is teaching patent law at the University of Oregon. Next spring, he is scheduled to teach trademark law at Willamette University and Licensing of Intellectual Property at the University of Oregon.
Shawn Kolitch Serves as Expert Witness
September 20, 2007—Shawn Kolitch was recently asked to serve as an expert witness for the Metropolitan Public Defender in Portland, and he has testified in two criminal proceedings thus far. In each case, Shawn testified as to the meaning of the term "centrifugal force" in an Oregon criminal statute, and more specifically as to whether the use of that term renders the statute unconstitutionally vague. In both cases, the judge dismissed the case on other grounds, without ruling on the issue of vagueness. Shawn's expert testimony in a third criminal case is scheduled for November 2007.
Shawn Kolitch Contributes Patent Articles
September 20, 2007—Shawn Kolitch, Ph.D, an associate at Kolisch Hartwell, recently contributed three articles to law journals. Lewis and Clark Law School’s Intellectual Property Newsletter published his article titled Patent Claim Construction: the Neglected Preamble, which focused on claim construction during patent litigation. The Marquette Intellectual Property Law Review published The Proper Scope of Patentability in International Law, which analyzed the environmental and public-health consequences of patent laws around the world. And Lewis and Clark Law School’s Environmental Law published his comment titled The Environmental and Public Health Impacts of U.S. Patent Law: Making the Case for Incorporating a Precautionary Principle.
George X. Wang Awarded Scholarship
September 1, 2007—Kolisch Hartwell has awarded George Wang a $1,000 scholarship to help finance his first year at Stanford University. George originally came to Kolisch in the summer after his junior year of high school, as part of our participation in the Apprenticeships in Science and Engineering (ASE) program sponsored by Saturday Academy and Portland State University. He came back to us again in summer 2007 before heading off to college at Stanford University. We wish him good luck in his academic pursuits.
Peter Sabido Publishes Article, Makes Presentation
September 1, 2007—The Tualatin Chamber of Commerce recently published an article by Kolisch Hartwell’s Peter Sabido. The article, in Volume 27, Issue 8 of the Tualatin Chamber News, summarized the types of intellectual property protection available to businesses and how businesses might benefit from securing IP protection. Peter also recently made a presentation at the “Invention to Venture” conference, held at the University of Portland. The conference provided an introduction to technology entrepreneurship. Peter’s presentation focused on the various forms of intellectual property protection available to entrepreneurs.