Carl A.Kukkonen III

Partner

San Diego + 1.858.314.1178 Silicon Valley + 1.650.687.4178

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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.

Experience

  • Sempra Energy sells PXiSE Energy SolutionsJones Day advised Sempra Energy in the sale of membership interests in PXiSE Energy Solutions to Yokogawa Electric Corporation.
  • SAP wins summary judgment on Teradata trade secret and antitrust claimsJones Day successfully defended SAP, one of the world's leading producers of software for the management of business processes, against trade secret and antitrust claims in a lawsuit filed in the Northern District of California.
  • Bridge to Life announces first close of $56 million growth financingJones Day advised Bridge to Life, Ltd. in its $56 million capital raise consisting of a secured credit facility and a Series A preferred equity investment.
  • Huntington Ingalls sells San Diego Shipyard to Titan Acquisition HoldingsJones Day advised Huntington Ingalls Industries in the sale of its San Diego Shipyard to Titan Acquisition Holdings.
  • CalypsoAI raises $13 million in Series A roundJones Day represented CalypsoAI, a leader in validation, security, and monitoring for artificial intelligence and machine learning, in connection with the $13 million Series A fundraising led by Paladin Capital Group.
  • CORSAIR® acquires SCUF Gaming®Jones Day advised CORSAIR® in connection with the acquisition and related financing of high-performance controller pioneer SCUF Gaming "SCUF®" and its extensive patent portfolio.
  • Cylance acquired by BlackBerry for $1.4 billionJones Day advised Cylance, an artificial intelligence and cybersecurity leader, in its $1.4 billion acquisition by BlackBerry Limited, plus the assumption of unvested employee incentive awards.
  • Sempra Energy unit PXiSE Energy completes equity financing with Mitsui & Co.Jones Day advised Sempra Energy in connection with the issuance by its subsidiary, PXiSE Energy Solutions, LLC, of up to a 20 percent equity investment to Mitsui & Co., Ltd., as well as the negotiation and entering in of a strategic collaboration agreement for the development and sale of PXiSE's technology.
  • Sempra Energy develops patent portfolio directed to advanced electric grid technologiesJones Day is advising Sempra Energy and its subsidiary PXiSE Energy Solutions with the development of a patent portfolio directed to software and hardware solutions directed to improving the efficiency and efficacy of the electrical grid.
  • Multinational software corporation develops patent portfolio leveraging blockchain technologiesJones Day is assisting a multinational software corporation in developing a patent portfolio leveraging blockchain technologies.
  • Cylance develops worldwide trademark portfolio for cybersecurity softwareJones Day advises Cylance, Inc. on the development and enforcement of its worldwide trademark portfolio directed to leading machine learning-based cybersecurity software and related services.
  • Cylance develops patent portfolio directed to advanced cybersecurity software utilizing machine learning / artificial intelligenceJones Day is advising Cylance Inc. with the development of a patent portfolio directed to advanced cybersecurity software utilizing machine learning / artificial intelligence.
  • Canaccord Genuity and Cowen and Company underwrite $30 million public offering of Common Stock by AvingerJones Day represented Canaccord Genuity, Inc. and Cowen and Company, as lead underwriters, in connection with a $32 million follow-on public offering of Common Stock by Avinger, Inc., a commercial-stage medical device company that designs, manufactures, and sells image-guided, catheter-based systems that are used by physicians to treat patients with peripheral arterial disease.
  • Cylance raises $100 million in Series D roundJones Day represented Cylance Inc., a cybersecurity company that applies artificial intelligence algorithms to predictively identify and stop malware and advanced threats, in connection with its issuance of $100 million of Series D Convertible Preferred Stock in a private placement.
  • SAP establishes diverse patent portfolio directed to software and database innovationsJones Day represents a leading enterprise software and database developer SAP SE in managing patent portfolios directed to diverse innovations including database technologies, mobility, UX, cloud computing, and big data.
  • Aerospace Corporation establishes cutting edge patent portfolio directed to diverse terrestrial and space innovationsJones Day represents The Aerospace Corporation in strategically developing its patent portfolio directed to diverse innovations including space and terrestrial communication systems and protocols, advanced sensors, optics, and related manufacturing processes.
  • Draeger establishes global patent portfolio directed to diverse medical devices and safety equipmentJones Day represents medical device manufacturer Draeger Medical Systems, Inc. in managing global patent portfolios relating to patient monitors (both hardware and related software), physiological sensors, incubators, and breathing apparatus.
  • ANSYS expands global intellectual property portfolioJones Day provides IP advice to ANSYS, Inc. and assists with the prosecution and management of its international patent portfolio related to engineering simulation for assisting the world's most innovative companies in delivering radically better products to their customers.

    • 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.

    View All

    May 2022 Commentary

    NFTs: U.S., EU, and UK Key Trademark Considerations

    April 2022 Commentary

    NFTs: U.S., EU, and UK Key Copyright Considerations

    March 2022 Blog

    No Supplemental Information Permitted To Fix Petition Faults, PTAB Litigation Blog

    March 2022 Newsletters

    Vital Signs: Digital Health Law Update | Winter 2022

    February 2022 Webinars

    Webinar Series: Cross-Practice Issues in Life Sciences M&A

    January 2022

    USPTO Launches Pilot Program to Defer Subject Matter Eligibility Rejections

    January 2022 Blog

    PTAB Denies One of Multiple Petitions, Leaving Claims Unchallenged, PTAB Litigation Blog

    November 2021 Blog

    Fed. Cir. Rejects PTAB Decision on Mystery Shopper Patent; Returns to Sender, PTAB Litigation Blog

    September 19-21 & September 28-30, 2021 Webinars

    Intellectual Property Owners 2021 Annual Meeting

    August 2021 Blog

    PTAB Denies Patent Owner’s Last-Minute Discovery Request, PTAB Litigation Blog
    View All

    Additional Publications

    • 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?
    • 2014
      USPTO Issues Interim Guidance on Patent Eligibility Under §101
    • 2011
      The Law That Protects the Appearance of Your Website
    • 2010
      USPTO Expands Green Technology Pilot Program to Cover More Inventions, Energy & Clean Technology
    • 2008
      A Look at the Changing Landscape of Patent Prosecution, San Diego Business Journal
    • 2007
      More Companies Seek Patents in Unconventional Areas, Boston Business Journal
    • 2007
      Emerging Patent Issues in Cleantech, IP Law 360 / Energy Law 360
    • 2007
      Expanding Preconceptions of Patentable Matter, bizSanDiego
    • 2007
      When in Doubt, Spell It Out: Complying with a Patentee's Duty of Disclosure, San Diego Daily Transcript

    Speaking Engagements

    • March 10, 2022
      Artificial Intelligence IP and Regulatory Legal Issues
    • March 9, 2022
      Artificial Intelligence IP and Regulatory Legal Issues
    • January 20, 2022
      Intellectual Property Primer
    • January 19, 2022
      AI in Drug Discovery and Development
    • November 11, 2021
      Artificial Intelligence in Drug Discovery and Development: IP Considerations
    • November 4, 2021
      Functional Claiming for Software Patents: Leveraging Recent Court Treatment
    • October 25, 2021
      IP Due Diligence in Life Sciences Acquisitions
    • 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

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