Steven C. Carlson

650.784.4012

Partner

SCarlson@RobinsKaplan.com
650.784.4012

Experience

Steven C. Carlson is an intellectual property litigator who draws upon national and international experience to assist clients with a wide range of legal disputes, including patent litigation, trade secret matters, and copyright disputes. Armed with a keen understanding of the technology that powers his clients’ businesses, Mr. Carlson works closely with technology companies to protect and promote their unique interests.

Mr. Carlson is a first-chair courtroom litigator whose professional experience covers a wide range of technologies, including medical devices, semiconductors, chemistry, machine learning, genomics, telecommunications, and robotics. He practices in state and federal courts around the country and has secured a trial verdict before the Patent Trial and Appeal Board (PTAB) that invalidated multiple database technology patents used in the travel industry. In addition to his intellectual property litigation work, Mr. Carlson also practices in the areas of product liability, privacy, and accessibility of disabled persons in digital environments.

A thought leader and an educator, Mr. Carlson has written numerous articles and books on the topic of patent litigation. He is the co-author of “Patents in Germany and Europe: Procurement, Enforcement and Defense,” a handbook that provides attorneys the tools they need to enforce patents in the German market. He is also a co-author of “Patent Case Management Judicial Guide,” a publication of the Federal Judicial Center that is distributed as a resource to all U.S. federal judges. He currently teaches advanced patent litigation at UC Berkeley, focusing on litigation before the PTAB and the International Trade Commission.

Prior to attending law school, Mr. Carlson volunteered with the United States Peace Corps, spending three years directing health and sanitation programs in remote Moroccan villages. He continues to uphold the ideals of international humanitarian service as Past President of the Rotary Club of San Carlos, through which he is coordinating the construction of an aqueduct in Morocco’s High Atlas Mountains.

Mr. Carlson earned his J.D. from Yale Law School and his B.A. in chemistry from Reed College. He previously served as a law clerk to the Hon. Paul. R. Michel in the U.S. Court of Appeals, Federal Circuit, and to the Hon. Roderick R. McKelvie in the U.S. District Court, District of Delaware.

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Representing Topcon Medical Systems in defense of patent and trade secret allegations concerning medical devices for glaucoma diagnosis.

Representing Expensify, an expense report software provider, in patent and trademark suits against multiple competitors.

Representing June Life, a developer of artificial intelligence ovens, in a patent litigation and corporate diligence matters.

Represented InDxLogic, Inc. in asserting trade secret misappropriation claims against former customer of medical record indexing software.

Represented Accrue in trademark opposition, adverse to Reed Elsevier concerning the term “Almanac.”

Represented Sphero in offensive and defensive patent disputes regarding robotic toy technology.

Represented iVenture Card Asia in successfully arguing and winning trial at the Patent Trial and Appeal Board to invalidate patents held by Smart Destinations concerning database technology used in the travel industry.

Represented electronic key fob innovator TrackR Inc. in defense of patent infringement claims.

Represented smart teddy bear inventors Carly Gloge and Isaac Squires in Delaware Chancery Court in a dispute seeking to unwind their company’s acquisition amid claims of fraud and inducement. The case was settled with transfer of assets. Gloge et al. v. Cartwheel Kids (Prior to joining Robins Kaplan LLP)

Represented database service provider mLab in domain name and trademark litigation against MongoDB. (Prior to joining Robins Kaplan LLP)

Represented bioethanol leader Superior Oil Co. in a patent priority dispute against Solenis Technologies. (Prior to joining Robins Kaplan LLP)

Represented a leading computing company in cybersecurity proceedings against rogue IT employee. (Prior to joining Robins Kaplan LLP)

Represented ZOLL Medical in assertion of patents to hypothermia-inducing catheters, including coordination of Germany proceedings. (Prior to joining Robins Kaplan LLP)

Represented medical diagnostic company Cepheid in defense of infringement claims brought by Abaxis concerning freeze-dried reagent formulations. (Prior to joining Robins Kaplan LLP)

Represented Applied Biosystems in U.S. and Germany assertion of realtime PCR instrument patents, winning worldwide license. (Prior to joining Robins Kaplan LLP)

Represented Allergan Inc. at trial and on appeal. Resulted in the successful enforcement of patents relating to glaucoma therapy. (Prior to joining Robins Kaplan LLP)

Represented hard drive manufacturer Cornice in an International Trade Commission dispute with Seagate. (Prior to joining Robins Kaplan LLP)

Represented Nassda in a trade secret matter relating to electronic design automation technology. (Prior to joining Robins Kaplan LLP)

Listed in The Best Lawyers in America (2019-2022 editions)
Listed in IAM 1000: The World's Leading Patent Practitioners (2018)
Named a “Northern California Super Lawyer,” Super Lawyers (2016-2020)
Named a “Northern California Rising Star,” Super Lawyers (2009-2011)

Rotary International, Board Member and Incoming President of the Rotary Club of San Carlos

Bar Admissions

California
U.S. Patent and Trademark Office

Spoken Languages

Berber
Arabic
French

Education

Yale Law School, J.D. (1999)
Reed College, B.A. in Chemistry (1993)

Professional Associations

Federal Judicial Center

"Machine Learning Models and the Legal Need for Editability: Surveying the Pitfalls (Part II)," IPWatchdog (December 15, 2021)
"Machine Learning Models: The Legal Need for Editability (Part I)," IPWatchdog (December 8, 2021)
"Earl of Sandwiches," The Rotarian (February 2020)
"Serial and Duplicative Petitions at PTAB by Apple, Other Tech Giants Flout Congressional Intent," IPWatchdog (November 8, 2018)
“The USPTO Must End Repeated and Concerted Patent Attacks,” IPWatchdog (October 30, 2018)
“Duplicative IPR Findings,” PatentlyO (October 29, 2018)

Interplay of District Courts and the PTAB: Navigating an Uncertain Path
22nd Annual Berkeley-Stanford Advanced Patent Law Institute, San Jose, California (December 9, 2021)
AI Patents: Enforceability Strategy
18th International Conference on Artificial Intelligence and Law (ICAIL 2021): AI & Patents Workshop (June 25, 2021)
No Rewind Button: Legal Pitfalls in Machine Learning Systems
Moderator, Second Annual AI Legal Summit, Webinar (May 5, 2021)
Landslide: IP Legal Pitfalls of Machine Learning Systems
American Bar Association Section of Intellectual Property Law, Webinar (September 22, 2020)
Insulating Your AI System from IP Claims and Guarding its Value
Nordic Innovation House Silicon Valley, Palo Alto, California (January 8, 2020)
Willfulness and Waiver of Privilege
20th Annual Berkeley-Stanford Advanced Patent Law Institute: Silicon Valley, East Palo Alto, California (December 13, 2019)
Using IPRs to Challenge and Defend Patents: Standing, Serial IPRs, Unintended Consequences
Strafford Webinar (December 12, 2019)
Insulating your AI system from IP claims and guarding its value
AI Legal Summit: Solutions for Averting IP and Privacy Litigation in the Age of Artificial Intelligence, San Carlos, California (May 9, 2019)
IP Enforcement Protection 101
The Foundry Group presentation (March 6, 2019)
Trade Secrets Positioning and Damages
Bay Area In House Med-Tech Association, Mountain View, California (February 27, 2019)
Enforcing Patents Global Strategy
Webinar, IPO IP Chat Channel (December 13, 2018)
Updates on Obviousness In District Court and at the PTO
2018 Advanced Patent Law Institute, Palo Alto, California (December 6, 2018)