Steve Carlson is a Principal in Fish & Richardson's Silicon Valley office, and litigates cases across the technology spectrum. Recent successful representations include a bench trial victory on behalf of a pioneering pharmaceutical developer of glaucoma medications, a jury trial victory over intrusion detection software, and successful enforcement of patents to polymerase chain reaction technology. Steve is an active speaker and writer on issues of patent law, drawing on his experiences as a law clerk to the Honorable Paul R. Michel of the Federal Circuit, and to the Honorable Roderick R. McKelvie of the District of Delaware. He a co-author of the book Patents in Germany and Europe: Procurement, Enforcement, and Defense, written in tandem with Fish’s Munich team. He is also a co-author of the Patent Case Management Judicial Guide, published by the Federal Judicial Center and on the shelves of judges nation-wide.
Books
"Patents in Germany and Europe: Procurement, Enforcement and Defense: A Handbook for American Lawyers," with Alexander Harguth (2011), published by Wolters Kluwer.
"Patent Case Management Judicial Guide," co-author, in collaboration with the Federal Circuit Center and the University of California Berkeley Center for Law and Technology (provided to judges nationwide), second edition forthcoming.
Presentations
“’Patents in Germany and Europe: Procurement, Enforcement and Defense’ (presentation given to in-house audiences on patent strategies in Germany)”
“October 2011 Back to School: The New Patent Law Explained”, Berkeley Center for Law & Technology
"The 'America Invents Act': What You Need To Know," Fish-hosted webinar, September, 20, 2011.
"The Evolution and Progress of Congressional Patent Reform: A Legislative Update," sponsored by California Healthcare Institute, April 7, 2010.
"Early Stage IP Strategies: The Long View Toward Strong Patents," presented at Bay Area Pharma and Life Sciences IP Summit, February 4, 2010.
"Strategies for Global Intellectual Property Protection," presented at American Conference Institute’s Foreign Patent Law and Regulation for the U.S. Life Sciences Patent Practitioner, December 7 – 8, 2009.
"Federal Circuit Case Law, 2008-2009 — A Clerk’s Perspective," presented at BIO IP Counsels Committee Conference, Washington, D.C., October 27, 2009.
Selected publications
"German Utility Models: A Useful and Affordable Tool for Global IP Portfolios," The Recorder, November, 2011, Steven C. Carlson, Frank Peterreins, Alexander Harguth, Adam R. Steinert, and Jan-Malte Schley.
"Patent Claim Construction: A Modern Synthesis and Structured Framework," Peter S. Menell, Matthew D. Powers, and Steven C. Carlson, Berkeley Technology Law Journal, Vol. 25, No. 2, P. 711.
"Lab Notebooks: A Patent Litigator’s View," Steven C. Carlson, Genetic Engineering & Biotechnology News (January 2010).
"'Obviously' a challenge: Patent survival statistics & tips," Steven C. Carlson and Willy Chang, Industrial Biotechnology (Fall 2009).
"High Hurdles for Biotechnology Patents: The Written Description Requirement," with L. M. Pringle, Industrial Biotechnology, 4, 4, 337-339 (Winter 2008).
"Patent Pools and the Antitrust Dilemma, "YALE J. ON REG., 16, 359, 379-81 (1999) (cited in U.S. Philips Corp. v. International Trade Com'n, 424 F.3d 1179, 1193 (Fed. Cir. 2005)).
"The Evolution and Impact of the Doctrine of Willful Patent Infringement," with M. D. Powers. SYRACUSE L.REV., 51, 53, 77-83 (2001) (cited in Sharper Image Corp. v. Honeywell Intern., Inc., 222 F.R.D. 621, 631 (N.D.Cal. 2004)).