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 Litigation
- RealNetworks, Inc. v. Streambox, Inc.
U.S District Court for the Western District of Washington
[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.
U.S District Court for the Eastern District of North Carolina
Represented Nintendo in a suit for copyright and trademark counterfeiting infringement of video games. Secured damages and injunctive relief against overseas counterfeiter. - Busek, Inc. v. Aerojet-General Corp.
American Arbitration Association
Defended Aerojet-General Corp. in an arbitration concerning the scope of a patent license. Client's rights affirmed. - Kouvato, Inc. v. Jore Corporation
U.S District Court for the District of Montana
Defended Jore Corporation in a patent case related to drill bit design. Won jury verdict of patent non‑infringement, which was upheld on appeal to Federal Circuit. - SCS Interactive, Inc. v. Whitewater West Industries, Inc.
American Arbitration Association
[Patent license - interactive water play system]. Arbitration concerning scope of patent license; client's interpretation upheld. - Simpson Strong-Tie, Inc. v. InQuest Engineering
U.S District Court for the Western District ofWashington
[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.
U.S District Court for the Western District ofWashington
[Trademark - tree and triangle logo]. Policed client's famous mark against infringing use; settled on favorable terms. -
Patch Products v. LB Games et al.
U.S.District Court for the Western District ofWisconsin
Defended LB Games in a declaratory judgment action for patent infringement and breach of contract relating to game products. Obtained dismissal for lack of declaratory judgment jurisdiction. -
Poly-America v. Stego Industries, LLC
U.S.District Court for the Northern District of Texas
Defended Stego Industries, LLC in a trademark case relating to a color mark. Obtained dismissal due to lack of declaratory judgment jurisdiction.