Kolisch Hartwell Announces New Partners in the Firm
January 3, 2012—Kolisch Hartwell is very pleased to announce that Peter Sabido and T.J. Romano have become partners in the firm, effective January 1, 2012.
Peter’s practice focuses on obtaining, licensing, and enforcing patent, trademark, copyright, and trade-secret rights for his clients. Peter supports clients from our Portland office and our Silicon Valley office located in Palo Alto, California.
In 2009, T.J. was recognized as one of Oregon's top up-and-coming attorneys when Oregon Super Lawyers® magazine named him to its "Rising Stars" list. T.J.’s practice is focused on intellectual property litigation and counseling. He also works on patent, trademark, and copyright matters in a wide array of technology areas.
Congratulations, Peter and T.J.!
Carla Todenhagen Featured in Briefly Legal PDX
August 30, 2011—The July 7, 2011 issue of Briefly Legal PDX included an interview featuring KH patent attorney Carla Todenhagen. Carla’s diverse professional interests, as well as her involvement with the Society of Women Engineers, caught the journalist’s attention and became the main focus of the questions. Briefly Legal PDX is a weekly Daily Journal of Commerce (DJC) digital law newsletter. The DJC provides information in the construction industries serving Oregon and southwest Washington State. Check out Briefly Legal by clicking here and subscribe to their newsletter.
Carla Todenhagen Elected Alternate Professional Senator of the Society of Women Engineers
May 13, 2011—Kolisch Hartwell patent attorney Carla Todenhagen was elected regional Alternate Professional Senator of the Society of Women Engineers (SWE) for the next fiscal year. SWE, founded in 1950, is a not-for-profit educational and service organization that empowers women to succeed and advance in the field of engineering, and to be recognized for their life-changing contributions as engineers and leaders. In her newly elected position, Carla will represent the interests of SWE members from Alaska, Idaho, Montana, Oregon and Washington at national SWE meetings. Carla will also continue as the region’s representative in the Government Relations and Public Policy (GRPP) committee. Carla joined SWE in 1998 and has been a regional representative of the GRPP group since 2010.
Carla Todenhagen Speaks at the Society of Women Engineers Regional Meeting
May 5, 2011—Kolisch Hartwell patent attorney Carla Todenhagen gave a presentation of public policy focus areas for the Society of Women Engineers (SWE) in 2011 at the 2011 SWE Region J Conference in Corvallis, Oregon on April 9. Carla, who is a representative of SWE’s Government Relations and Public Policy (GRPP) group, specifically discussed SWE’s focus of using Title IX to address gender equity issues in science, technology, engineering, and mathematics (STEM) education and identified how SWE members can get involved. Carla joined SWE in 1998 and has been a regional representative of the GRPP group since 2010.
Kolisch Hartwell Welcomes New Shareholder Shawn Kolitch
January 13, 2011—Kolisch Hartwell is very pleased to announce that Shawn Kolitch has been invited to become a shareholder in the firm, effective January 1, 2011. Shawn has been with us since 2002—first as a Technical Consultant and then as an attorney starting in 2006. In 2009, Shawn was recognized as one of Oregon's top up-and-coming attorneys when Oregon Super Lawyers magazine named him to its "Rising Stars" list.
Shawn's practice is focused on intellectual property litigation and prosecution relating to high-tech industries, emerging technologies, and alternative transportation, especially the bicycle industry. Shawn also maintains a strong interest in criminal and Constitutional issues, and in the areas of overlap between science and the law.
Congratulations, Shawn!
Peter Sabido Presenter at AICHE Annual Meeting
January 10, 2011—Kolisch Hartwell IP attorney Peter Sabido presented at the American Institute of Chemical Engineers Annual Meeting in Salt Lake City, Utah on November 11, 2010. Peter's presentation was titled Protecting Innovations in Green Technology for the technical session entitled "Intellectual Property Protection of Cleantech, Nanotech, and Other Chemical Technologies." Additionally, an article Peter wrote having the same title was published in conference proceedings.
Peter Sabido Makes Presentation at Fuel Cell Seminar
November 9, 2010—Kolisch Hartwell IP attorney Peter Sabido presented at the Fuel Cell Seminar & Exposition in San Antonio, Texas on October 21, 2010. Peter’s presentation was titled Protecting Innovations in Fuel Cell Technology. Additionally, an article Peter wrote having the same title was published in the abstract book of the conference. The mission of the conference is to advance global energy, environmental, and economic benefits offered by fuel cell technology.
Peter Sabido Makes Presentation at Northwest Occupational Health Conference
October 20, 2010—Kolisch Hartwell IP attorney Peter Sabido made a presentation to attendees at the 2010 Northwest Occupational Health Conference in Portland on October 14, 2010. The NOHC is one of the nation’s oldest conferences, and brought together health, safety, and medical professionals in the Pacific Northwest for a full three days. Peter’s presentation was titled “Protecting Innovations in Health and Safety.” The main purpose of the annual conference is to share the results of case studies, field investigations, research efforts, and program evaluations, and was held at the Sheraton Portland Airport Hotel from October 13-15, 2010.
David C. Bourgeau Passes Oregon State Bar Exam
October 8, 2010—Kolisch Hartwell is pleased to announce that Dave Bourgeau passed the Oregon State Bar Examination and the Multistate Professional Responsibility Examination. Having graduated in May 2010 with highest honors from Lewis & Clark Law School, this achievement comes as no surprise. The swearing-in ceremony for all new bar admittees was held on October 7, 2010, in the Smith Auditorium at Willamette University in Salem. Dave, who has been a law clerk with us during Lewis & Clark’s spring 2010 semester, will now be an associate at Kolisch Hartwell. Congratulations, Dave!
KH Attorneys Make Presentation at Interbike International Bicycle Expo
September 29, 2010—Kolisch attorneys
and bicycle enthusiasts Pierre Van Rysselberghe and
Shawn
Kolitch presented a well-received intellectual property seminar at the
Interbike International Bicycle Expo
held in Las Vegas on September 22-24, 2010. Their two-hour seminar centered
around a series of hypothetical intellectual property issues confronted by
a fictitious company and its fictitious product the BANANA BIKE, shown. As
part of the seminar, they created and distributed BANANA BIKE t-shirts to
the audience.
Chuck DeVoe Conducts Hands-On Classroom Session for Saturday Academy
July 19, 2010—Chuck DeVoe, intellectual property attorney and Kolisch Hartwell shareholder, conducted a hands-on classroom session for the Saturday Academy's Apprenticeships in Science and Engineering (ASE) Midsummer Conference on Friday, July 9, 2010. Saturday Academy is a non-profit organization that offers classes and camps for second- through twelfth-graders in a wide range of topics, including science, engineering and technology to humanities and the arts. The Midsummer Conference, held at Oregon State University in Corvallis, involves Oregon's top science high school students from across the state. In his session, Chuck helped 15 students and several adult volunteers explore the area of patents, using samples of patented inventions as teaching tools.
Peter Sabido Guest Speaker at Top Legal Issues for Small Business Event
July 7, 2010—Kolisch Hartwell IP attorney Peter Sabido was an invited guest speaker at the June 29, 2010 event, Top Legal Issues for Small Business, of The Power MOB (Mom-Owned Businesses). The Power MOB is a Portland-based professional organization that supports individual mom entrepreneurs. Peter discussed the different types of intellectual property, how to protect each type, and common mistakes small businesses make in protecting intellectual property. Additionally, Peter's article Top 10 Considerations in Protecting the Intellectual Property of Your Business was published in The Power MOB Connection on July 1, 2010, and also appears on The Power MOB website.
David C. Bourgeau Graduates With Top Honors from Lewis & Clark Law School
June 25, 2010—Kolisch Hartwell is pleased to announce that Dave Bourgeau graduated on May 29, 2010 from Lewis & Clark Law School, where he completed his J.D. degree magna cum laude. Dave, who has been a law clerk with Kolisch Hartwell for the spring 2010 semester, also received an Intellectual Property Law Certificate for his concentrated studies in this area, and was given the Evening Student Award for his top grades in the program (the school has a tradition of honoring one student with the highest grade point average achieved during the four full years in the evening program). Dave was also a recipient of the Gantenbein Scholarship. Congratulations, Dave!
Peter Sabido Guest on Native Talk Radio
June 3, 2010—Kolisch Hartwell intellectual property attorney Peter Sabido was the invited guest speaker of Native Talk Radio (NTR) on its June 2, 2010 internet radio show. NTR, produced by Earth2World Productions, is a conversation of Native American business people addressing all aspects of what makes Native-run businesses unique. Peter discussed the various areas of IP law, including patents, trademarks, copyrights, and trade secrets, as well as general considerations for each of those areas.
Peter Sabido Re-Elected President of the Asian Pacific American Chamber of Commerce of Oregon and SW Washington
May 17, 2010—Kolisch Hartwell intellectual property attorney Peter Sabido was re-elected president of the Asian Pacific American Chamber of Commerce of Oregon and SW Washington (APACC) on May 12, 2010. APACC serves as a pro-business organization to cultivate and promote cultural and business relationships among Asian Pacific American chamber members, local businesses, non-profit organizations, government, media, and the general public. Peter is the founding president of APACC and will serve another one-year term.
Carla Todenhagen Gives Public Policy Talk at Oregon State University
April 28, 2010—Kolisch Hartwell patent attorney Carla Todenhagen gave a presentation titled Title IX: From Sports to Science and Engineering on April 28 at Oregon State University. Carla, who is a representative of SWE’s Government Relations and Public Policy Group, specifically discussed the positive implications of using Title IX to address gender equity issues in science, technology, engineering, and mathematics (STEM) education. Carla joined SWE in 1998 and gave a similar presentation at the SWE Region J conference in Richland, Washington on April 10.
Carla Todenhagen Speaks at the Society of Women Engineers Regional Meeting
April 21, 2010—Kolisch Hartwell patent attorney Carla Todenhagen gave a presentation of public policy focus areas for the Society of Women Engineers (SWE) in 2010 at the SWE Region J conference in Richland, Washington on April 10. Carla, who is a representative of SWE’s Government Relations and Public Policy Group, specifically discussed the positive implications of using Title IX to address gender equity issues in science, technology, engineering, and mathematics (STEM) education. Carla joined SWE in 1998 and will give a similar presentation at Oregon State University in Corvallis, Oregon on April 28.
Dr. Shawn Kolitch Speaks at Pedal Nation’s Bicycle Show in Portland
April 12, 2010—Dr. Shawn Kolitch, intellectual property attorney at Kolisch Hartwell, gave a presentation about IP law to a group of bicycle-industry representatives on April 11 at the Oregon Convention Center. Shawn’s presentation, given in conjunction with Pedal Nation’s The Bicycle Show, described various types of IP, including patents, trademarks, copyrights, and trade secrets. Shawn focused on IP considerations for startup companies, such as how to choose and protect a business name and how to avoid infringing IP rights when introducing a new product. Shawn’s presentation also served as the inaugural talk in a series of presentations sponsored by the Portland Bicycle Business League.
Carla Todenhagen Judges Student Science Fair
April 2, 2010—Kolisch Hartwell intellectual property attorney Carla Todenhagen was a judge at the 2010 Intel Northwest Science Expo held April 2, 2010 on the Portland State University campus. Selected under the auspices of the Society of Women Engineers in part for her bioengineering and patent-law background, Carla evaluated science projects relating to energy and transportation built by sixth-, seventh-, and eighth-grade students. “I was amazed by the quality of the projects,” said Carla, “and encouraged by the enthusiasm of the students.” Carla notes that the student presentations continue to show a strong interest in renewable energy, as was true when she judged the event last year.
Kolisch Hartwell Welcomes David C. Bourgeau as Law Clerk
February 26, 2010—Kolisch Hartwell is pleased to announce that Dave Bourgeau has joined us as a law clerk this spring. Dave is a law student at Lewis & Clark Law School, where he is completing his J.D. degree at the top part of his class with a certificate in intellectual property law, and where he was recently an editor for the Lewis & Clark Law Review. After completing his bachelor’s degree in Industrial and Operations Engineering at the University of Michigan, Dave attended the U.S. Navy’s Nuclear Power School and served as a commissioned officer on the USS California. His work experience also includes FedEx and Ford Motor Company. Welcome aboard, Dave!
Peter Sabido Re-Elected to the Board of the USC Alumni Club of Portland
February 17, 2010—Kolisch Hartwell intellectual property attorney Peter Sabido was recently re-elected to the Board of Directors of the University of Southern California Alumni Club of Portland. Peter started his fourth consecutive one-year term on February 1, 2010. Peter will continue to assist the club in programming, including organizing events that raise scholarship money for incoming USC students who are Oregon residents.
Two Kolisch Hartwell IP Attorneys Named Rising Stars
November 12, 2009—Shawn Kolitch and T.J. Romano have been named as Rising Stars among the Top Young Attorneys in Oregon. Both accolades were announced in the November 2009 issue of Oregon Super Lawyers® magazine. To compile Rising Stars list, the magazine invites 10,000 Oregon attorneys to nominate the best attorneys they’ve personally seen in action. It then conducts its own review and research to identify lawyers with a high degree of peer recognition and professional achievement. Congratulations, Shawn and T.J.
USPTO Rescinds Controversial Patent Regulations Package
October 15, 2009—The U.S. Patent and Trademark Office has scrapped proposed rules that would have effectively limited the number of claims in a patent application, the number of continued-examination requests, and the number of continuation applications. The rescinded rules, published in August 2007, were enjoined by the U.S. District Court in April 2008 in a lawsuit filed by affected companies, and never came into effect. The rules had been controversial from the beginning because many applicants felt they would unduly restrict the ability to protect intellectual property. In announcing the decision, David Kappos, who became Director of the USPTO in August 2009, said "the USPTO should incentivize innovation, develop rules that are responsive to its applicants’ needs and help bring their products and services to market."
Kolisch Hartwell Successfully Defends The Coast Distribution System in Patent Action
September 28, 2009—Kolisch Hartwell has recently negotiated the settlement of a patent infringement action brought by American Honda against the firm's client The Coast Distribution System, Inc. and its Chinese supplier Wuxi Kipor Power Company, Ltd. The terms include a covenant not to sue Coast or Kipor for infringement of patents that Honda contended were infringed by Coast generators and engines. A related action brought by Honda in the International Trade Commission was previously settled on similar terms. The present action, filed in U.S. District Court, sought damages. After multiple trips to China by Kolisch Hartwell personnel, as well as depositions, claim construction and summary judgment hearings, the case was settled on terms that had previously been unacceptable to Honda.
Stan Hollenberg Speaks at Salk Institute on Nuclear Hormone Receptors
April 17, 2009—Kolisch Hartwell patent agent Stan Hollenberg was an invited speaker at a symposium on nuclear hormone receptors held April 17, 2009 at the Salk Institute in La Jolla, California. Hollenberg chaired a session titled The Dawn of the Nuclear Receptors, where he discussed the effort lead by Dr. Ronald M. Evans to clone and characterize the first nuclear hormone receptor. This seminal work laid a foundation for understanding how hormones affect cellular activity and for developing drugs that emulate naturally occurring substances. The symposium was organized to honor Dr. Evans, a pioneer in the field and winner of numerous prestigious awards, including the Lasker Award, an American equivalent of the Nobel Prize.
Peter Sabido Gives Two Intellectual Property Presentations
April 15, 2009—Kolisch Hartwell IP attorney Peter Sabido was the invited guest speaker at the April 15, 2009 meeting of the Philippine American Chamber of Commerce of Oregon, where he gave a talk titled What Intellectual Property Law can do for Your Business. Peter was also the guest speaker at the April 7, 2009 Lunch ’n’ Learn meeting of the Tualatin Chamber of Commerce, where he spoke on Protecting the Intellectual Property of Your Business. Both presentations discussed the basics of patents, trademarks, copyrights, and trade secrets, and provided general considerations beneficial to small and large businesses.
Peter Sabido Talks to Law Students about Patent Law Jobs
March 2, 2009—Kolisch Hartwell intellectual property attorney Peter Sabido participated in a panel discussion on patent-law job-search strategies held February 3, 2009 at Lewis & Clark Law School. The one-hour forum, Tips for Patent Law Job Seekers, gave students interested in practicing intellectual property law the opportunity to ask the three panelists questions about how to enter professional practice. Peter, who is a 2003 alumnus of Lewis & Clark, discussed credentials and qualifications that are helpful in practicing intellectual property law. He also provided practical suggestions on resumes, cover letters, networking, and interviewing.
Dr. Shawn Kolitch Publishes Copyright Law Article
February 4, 2009—Shawn Kolitch, intellectual property attorney at Kolisch Hartwell, has published an analysis of two related questions in copyright law in the Fall 2008 edition of the Oregon Intellectual Property Newsletter. Shawn’s article, “Statutory Uncertainty at Both Ends of a Copyright Infringement Case,” discusses ambiguities relating to copyright registration as it pertains to establishing federal jurisdiction at the onset of an infringement lawsuit and to eligibility for damages at its conclusion. As detailed in Shawn’s article, federal courts have inconsistently interpreted the actions that establish “registration” and have not yet addressed certain issues relating to willful infringement and statutory damages.
USPTO Agrees with Kolisch Hartwell that Patent Asserted Against VeriFone is Invalid
January 16, 2009—A panel of three examiners at the U.S. Patent and Trademark Office has agreed with Kolisch Hartwell that a patent asserted against our client VeriFone is invalid. Initially, Spa Syspatronics sued VeriFone for patent infringement. Kolisch Hartwell defended VeriFone by asking the PTO to reexamine the patent. During reexamination, a special unit of examiners tests the validity of an issued patent. Here, we pointed out that three earlier publications (including some already known to Spa) showed that Spa’s patent lacked any new invention. In a first Office action issued December 19, 2008, the PTO agreed that each publication separately anticipated each and every element of Spa’s patent claims. The PTO therefore rejected all 10 claims. The lawsuit against VeriFone remains on hold pending the PTO’s final determination.
Shawn Kolitch Serves as Expert Witness
January 8, 2009—Intellectual property attorney Shawn Kolitch recently served as an expert witness in a pair of criminal cases for the Metropolitan Public Defender in Portland. In both cases, Shawn testified as a scientific expert on the issue of whether the term “centrifugal force” in an Oregon criminal statute renders the statute unconstitutionally vague or overbroad. One case was dismissed on other grounds before trial. In the other, the Court denied the defendant’s demurrer based on constitutionality arguments, and the defense decided not to appeal. Shawn has since been contacted by public defenders in other Oregon counties, and expects to continue working as an expert in this area.
Kolisch Hartwell Litigators Turn Back Terex
November 21, 2008—Kolisch Hartwell litgators recently prevailed against a new attempt by the Terex companies to circumvent a patent owned by our client Construction Equipment Company. The case goes back to a 1999 patent-infringement trial. CEC had patented its screening equipment, which is used in quarries, landfills, and composting yards. When Powerscreen International (now owned by Terex) came out with similar equipment, CEC sued Powerscreen for patent infringement. After three years of litigation including appeals to the U.S. Supreme Court, Kolisch Hartwell obtained triple damages, attorney fees, and a permanent injunction against infringement. In 2007, Terex renewed its attack against the CEC patent via a USPTO reexamination proceeding. Terex then asked the Oregon District Court to lift the injunction. Our litigators recently defeated this renewed attack, arguing that we expect CEC to prevail in reexamination.
Kolisch Hartwell Negotiates Settlement Agreement for Power-Transmission Patents
October 17, 2008—Kolisch Hartwell recently negotiated a significant settlement with the General Electric Company on behalf of its client John Vithayathil, Ph.D. Dr. Vithayathil is a leading innovator in the field of power transmission, having received many patents and several major awards from academic institutions and trade associations. Specifically, Dr. Vithayathil is the owner of U.S. and foreign patents directed to a scheme for rapid adjustment of network impedance. Dr. Vithayathil had asserted that GE infringed his patents by entering into a contract with Enelpower do Brasil, in which GE supplied fixed- and thyristor-controlled series capacitors for a Brazilian power-transmission system. We are pleased to have been able to assist Dr. Vithayathil in what ended up being a protracted negotiation, first with Siemens AG, a prior licensee of the Vithayathil patents, and then with General Electric.
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.
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.
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.
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.
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.