An acknowledged leader in the profession, Carl Kukkonen has more than 20 years of experience helping clients build litigation-ready patent portfolios, minimize risk through invalidity and freedom-to-operate analyses, and develop and implement litigation strategies including inter partes reviews (IPRs). Carl also performs due diligence for financing and M&A transactions, assists clients when licensing IP, and advises regarding brand protection matters.
Carl has prosecuted, analyzed, and litigated patents across various technologies including high-technology, life sciences, and energy.
His experience in the high-tech arena includes database technologies, cybersecurity, artificial intelligence (AI) and machine learning, natural language processing (NLP), ridesharing/carpooling, robotics, enterprise software, cloud computing, big data, blockchains, mobile phone software and hardware, telecommunications, Internet of Things (IoT), semiconductors, nanotechnology, optical devices, computer and microchip architecture, virtual and augmented reality, and signal and image processing.
In the area of life sciences, Carl has handled matters related to pharmaceuticals, digital health, wireless health care, medication delivery devices, patient monitors, breathing apparatus including respirators, incubators, infusion pumps, physiological sensors including cardiac monitors and blood pressure devices, ophthalmic technologies, and bone fixation plates and systems.
Carl's energy technology experience includes process and atmospheric sensors, solar panels and control systems, utility-scale energy distribution systems, energy efficiency technologies, water and wind turbines, fuel cells, and water purification systems.
The following represents experience acquired prior to joining Jones Day.
Represented CareFusion in expanding their global patent portfolio directed to software and hardware aspects of infusion systems as well as related disposables.
Represented Fair Isaac Corporation (FICO) in the strategic development of a portfolio directed to advanced techniques for credit scoring, decisioning, and transaction fraud technologies using machine learning models and analytics.
Represented Endress+Hauser in establishing a global patent portfolio directed to advanced spectrometers for use in industrial processing including oil and gas.
Represented Intel Corporation in establishing a diverse global patent portfolio directed to microprocessors, data processing, and data transmission.
Represented Ericsson in further developing their patent portfolio directed to mobile communications protocols and networking hardware.
Represented public medical technology company in establishing a patent portfolio directed to bone fixation plates and elements.
- June 2021
Trials and Tribulations - Focus on Digital Therapeutics (Intellectual Property Magazine)
- January 2019
Intellectual Property Owners Association (IPO) - 35 USC 101 Subject Matter Eligibility Cases Involving Software-Related Inventions
- October 11, 2018
An Introduction to the Risks of AI for General Counsel, Corporate Counsel
- June 2018
Protecting Artificial Intelligence Innovations Through Patents, IP Litigator
- November 21, 2015
Indefiniteness: Are You Reasonably Certain?
USPTO Issues Interim Guidance on Patent Eligibility Under §101
The Law That Protects the Appearance of Your Website
USPTO Expands Green Technology Pilot Program to Cover More Inventions, Energy & Clean Technology
A Look at the Changing Landscape of Patent Prosecution, San Diego Business Journal
More Companies Seek Patents in Unconventional Areas, Boston Business Journal
Emerging Patent Issues in Cleantech, IP Law 360 / Energy Law 360
Expanding Preconceptions of Patentable Matter, bizSanDiego
When in Doubt, Spell It Out: Complying with a Patentee's Duty of Disclosure, San Diego Daily Transcript
- September 21, 2021
Data Issues and Best Practices Related to Artificial Intelligence Agreements (IPO Annual Meeting)
- August 12, 2021
Latest Developments in AI Intellectual Property and the U.S. Patent Trial and Appeal Board
- August 10, 2021
Protecting AI Innovations
- July 29, 2021
Due Diligence Considerations when Acquiring or Partnering with AI Companies
- July 12, 2021
Artificial Intelligence IP Considerations in the Biopharma Lifecycle
- June 25, 2021
Artificial Intelligence in Drug Discovery and Development: IP Considerations
- June 23, 2021
The Patent Trial and Appeal Board: An Influence on Every Patent Litigation Today
- April 22, 2021
AI Systems and Drafting Patents: Enablement and Inventorship - Overcoming Patent Eligibility, Inventorship, and Enablement Challenges and Avoiding Rejections
- April 15, 2021
Artificial Intelligence: Enforcement of AI IP and Use of AI in Discovery
- April 13, 2021
Brain Interfacing and the Patent System (AsiaIP)
- January 28, 2021
Preparing an IP Portfolio for an Exit
- December 2020
Strategies for Protecting AI and other Software-based Technologies in High Tech / Biotech
- August 21, 2020
Biopharma AI Patent Portfolio Development Strategies
- July 2, 2020
Claim Drafting for U.S. Patent Applications in Electrical, Software, and Mechanical Technologies
- June 25, 2020
Healthcare on the Other Side: Telehealth: Evolving to the Virtual Care of Tomorrow
- June 8, 2020
AI Innovations: To Patent or Not to Patent?
- May 11, 2020
The Allure of Trade Secrets: KnowIt
- March 26, 2020
Protection of Digital Health Innovations
- February 2020
Life & Medical Science AI Patent Protection Trends
- January 23 2020
Addressing Bias in Artificial Intelligence Systems
- November 12, 2019
AIPLA Artificial Intelligence and IP Workshop Road Show: Protection of Machine Learning Training Data
- August 1, 2019
Strategies for Protecting AI Innovations
- June 2019
IP Protection Trends in Artificial Intelligence, Bulgaria
- June 2019
IP Protection Trends in Artificial Intelligence, Germany
- June 2019
IP Protection Trends in Artificial Intelligence
- June 2019
Artificial Intelligence: Emerging Issues and Strategic IP Protection
- September 20, 2018
IP Protection for Artificial intelligence and Big Data Innovations in the Life Sciences, Boston Bar Association Life Sciences Conference
- September 2018
Patent Strategies for Medical Technologies Utilizing Artificial Intelligence
- July 2018
Artificial Intelligence Deployed in Medical Devices: Patent Strategies and Challenges
- April 2018
Patent Claim Drafting for Software / Artificial Intelligence Technologies (University of California, San Diego)
- January 23, 2018
Protecting Your AI-Related Innovations: Trade Secrets or Patents?
- June 2017
Big Data and Cloud Computing: Strategies for Patent and Trade Secret Protection
- January 2017
Strategic Patent Protection of Software and AI-Based Innovations
- November 2016
Litigation-Focused Patent Prosecution
- October 2016
Update On Patentability Of Computer Implemented Inventions
- May 2016
Update on U.S. Protection of Computer Implemented Inventions
- January 20, 2016
Recent Developments in IP Law and Their Implications
- November 17, 2015
IP ConfEx: Becoming a Better IP professional and Legal Advisor: Soft Skills for Navigating a Contentious, Globalized Environment
- The George Washington University (J.D. with honors 1998); Harvey Mudd College (B.S. in Engineering 1995)
- California and registered to practice before the U.S. Patent and Trademark Office
- Legal extern to Senator Joseph R. Biden Jr., U.S. Senate Committee on the Judiciary (Fall 1996)
Southern California Super Lawyers (2015-2021), including four times having been named among the Top 50 Attorneys in San Diego
Best Lawyers in America: intellectual property litigation (2018-2022)
Twice named among Top 25 Portfolio Managers/Patent Prosecutors in California by the Daily Journal
Named Top Attorney eight times by the San Diego Daily Transcript
San Diego Business Journal: "Best of the Bar"
San Diego Metropolitan: 40 Under 40 (2009)
- Legal extern to Judge Randall R. Rader, U.S. Court of Appeals, Federal Circuit (Fall 1997)