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 in strategic intellectual property counseling, technology transactions, and litigation. Specifically, Carl advises clients on patent infringement and validity, preparation and prosecution of patent applications, prelitigation case assessment, active patent litigation, licensing and partnering agreements, IP due diligence, and brand protection matters.

Carl has represented clients in a wide range of industries including SAP, Dräger, Cylance, Qualcomm, Sempra Energy, Aerospace Corporation, CareFusion, Fair Isaac Corporation, First Data Corporation, Fox Interactive Media, Tencent, and many others.

Carl has prosecuted, analyzed, and litigated patents across various technologies including high-technology/software, medical devices, and energy technology. His experience in the high-tech arena includes database technologies, cybersecurity, artificial intelligence and machine learning, 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 medical devices he has handled matters related to medication delivery devices, wireless health care, digital health, bedside 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.

His 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

  • 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.
  • Huntington Ingalls to sell San Diego Shipyard to Titan Acquisition HoldingsJones Day is advising Huntington Ingalls Industries in the sale of its San Diego Shipyard to Titan Acquisition Holdings.
  • 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.

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    April 2021 Alerts

    U.S. Supreme Court Ends Decade-Long Software Copyright Battle: Google Wins

    April 2021 Blogs

    Conditional Offer to Abandon Claims Does Not Constitute Waiver to Assert, PTAB Litigation Blog

    April 2021 Blogs

    Machine Learning to Evaluate Genetic Data Held to be Patent Ineligible, PTAB Litigation Blog

    February 2021 White Paper

    Protecting AI Innovations Through Trade Secrets and Patent Protection

    February 2021 Blogs

    Request for Second Fintiv Preliminary Reply Denied, PTAB Litigation Blog

    January 2021 Newsletters

    Vital Signs Digital Health Law Update Winter 2021

    December 2020 Blogs

    PRECEDENTIAL: PTAB Declines To Resolve RPI Dispute, PTAB Litigation Blog

    November 2020 Commentaries

    USPTO Reports Highlight Importance of AI to U.S. Invention and Innovation

    November 2020 Blogs

    PO Collaterally Estopped From Asserting Related Patents, PTAB Litigation Blog

    October 2020 Newsletters

    Vital Signs: Digital Health Law Update | Fall 2020
    View All

    Additional Publications

    • 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

    • 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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