Bob Carlson combines a background in electrical engineering and computer application design with over 20 years experience in intellectual property licensing, acquisition and portfolio management, and trial and appellate litigation in federal courts nationwide.
His practice includes client counseling in intellectual property licensing, strategies for asserting and defending intellectual property claims, formal legal opinion regarding patent infringement and validity matters, and active representation in litigation and arbitration. Additionally, he assists clients in a broad range of industries with due diligence investigations and intellectual property acquisition and portfolio management. Mr. Carlson is a frequent lecturer in Continuing Education programs and industry seminars.
Education
- J.D., University of Colorado School of Law, 1982
- B.S. Electrical Engineering, University of Colorado College of Engineering and Applied Science, 1977
Professional Experience
- Christensen O’Connor Johnson KindnessPLLC, Seattle, WA
Intellectual Property and Commercial Litigation and Counseling
1991 to present, Member of firm since 1995 - Madden & Strate, P.C., Denver, CO
Commercial and Product Liability Litigation, 1982 to 1991 - Computer Sharing Services, Denver, CO
Special Projects Engineer, 1977 to 1979
Bar & Court Admissions
- United States Patent and Trademark Office
- United States Supreme Court
- United States Court of Appeals: Fourth, Ninth, Tenth, and Federal Circuit
- United States District Courts: Eastern and Western Districts of Washington, Northern District of California, District of Colorado, Northern District of Illinois
- Washington State Bar
Professional Affiliations
- Federal Circuit Bar Association
Amicus Committee: Member, 1994-2001, Chair, 2002-2003 - American Bar Association: Litigation Section; Section of Patent, Trademark and Copyright Law
- American Intellectual Property Law Association
- Washington State Bar Association: Litigation Section; Intellectual Property Section
- Washington State Patent Lawyers Association
- Licensing Executive Society
Community Involvement
Washington Talking Book and Braille Library, Seattle, WA, 2004‑Present
On-air volunteer reader, WTBBL Evergreen Radio Reading Service, broadcasting live readings of local and regional printed news media to vision-impaired and physically disabled listeners.
Representative Experience
Litigation
RealNetworks, Inc. v. Streambox, Inc. (W.D. Wash.)
[Digital Millennium Copyright Act - media streaming technology]. Court denied injunction against client’s file conversion product, permitting successful license negotiation.
Nintendo of America, Inc. v. Aeropower, Inc. (E.D. N. Car.)
[Copyright and trademark counterfeiting infringement - video games]. Secured damages and injunctive relief against overseas counterfeiter.
Busek, Inc. v. Aerojet-General Corp. (AAA)
[Patent license - satellite station-keeping thruster]. Arbitration concerning scope of patent license; client’s rights affirmed.
Kouvato, Inc. v. Jore Corporation (D. Mont.)
[Patent - drill bit design]. Jury verdict of patent non‑infringement upheld on appeal to Federal Circuit.
SCS Interactive, Inc. v. Whitewater West Industries, Inc. (AAA)
[Patent license - interactive water play system]. Arbitration concerning scope of patent license; client’s interpretation upheld.
Simpson Strong-Tie, Inc. v. InQuest Engineering (W.D. Wash.)
[Patent - building stability during seismic event]. Successful defense invalidated patent asserted against client; client’s counterclaim resulted in favorable settlement.
Weyerhaeuser Corporation v. Valley Electric Company, Inc. (W.D. Wash.)
[Trademark - tree and triangle logo]. Policed client’s famous mark against infringing use; settled on favorable terms.
Counseling
Panasonic Mobile Communications Co., Ltd.
Client counseling in intellectual property licensing (including FRAND licensing of patents essential to telecommunications standards) and strategic intellectual property portfolio management for mobile telecommunications manufacturer.
Whitewater West Industries, Ltd.
Client counseling, patent procurement and portfolio management for leading manufacturer of water park rides and play equipment sold and installed worldwide.
Amazon.com
Patent clearance, infringement/non-infringement and validity opinions for leading electronic commerce company.