Jo Dale Carothers, Ph.D.

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Jo Dale Carothers is a shareholder and chair of the firm’s Intellectual Property group and a member of the Litigation group. She is an intellectual property litigator and registered patent attorney. Jo Dale advises clients on a wide range of intellectual property issues, including patents (ownership, infringement/non- infringement, validity/invalidity, patentability, and proceedings before the United States Patent and Trademark Office (USPTO)), trade secrets , trademarks, and copyrights. Her practice emphasizes intellectual property litigation, licensing, contract disputes, and issues related to proceedings before the USPTO in all fields but with a special emphasis on electronics, embedded systems and high performance computing, Wi-Fi enabled devices, energy management, microprocessors/ microcontrollers, memory devices, wireless communications devices and protocols, smartphones and smart TVs (along with applications), in- home networking for computing and entertainment, consumer electronics, semiconductor process and fabrication technology, packaging, power conversion, and software for numerous applications. Jo Dale has represented companies in litigation in numerous federal district courts and state courtsacross the country, the Federal Circuit Court of Appeals, and in Section 337 investigations in the United States International Trade Commission (ITC).

Before joining Weintraub Tobin in 2014, Jo Dale spent many years as a partner in Big Law firms. Prior to becoming an attorney, Jo Dale was a tenured professor of Electrical and Computer Engineering at the University of Arizona and served as an expert witness in intellectual property litigation. Her research lab at the University of Arizona developed patented technology that was used to decode images from Mars in the Mars Pathfinder Mission, which was the first of a series of missions to Mars that included rovers.

Jo Dale has been selected multiple times, including in the current year, as a San Diego Super Lawyer by Super Lawyers Magazine, and was named to the 2018 San Diego list of The Best Lawyers in America® for Intellectual Property Litigation.


Representative Matters

Note: confidential matters advising clients on pre-litigation IP issues, third-party subpoenas, licensing agreements, and patent prosecution issues cannot be listed, but the following list shows representative litigation matters.

Magnacross v. Novatel Wireless, Inc. (TXED). Representation of Novatel in patent litigation involving wireless data transmission systems.

CalAmp Wireless Networks v. Novatel Wireless, Inc. and Enfora, Inc. (TX State Court, 14th Judicial District, Dallas County). Representation of Novatel and Enfora in a contract dispute.

Envisiontec, Inc. v. Formlabs, Inc. (CACD). Representation of Formlabs in patent litigation involving 3D printing.

Anza Technology, Inc. v. Novatel Wireless, Inc. (CASD). Representation of Novatel in patent infringement litigation involving flip-chip bonding.

REGEN Energy Inc. (now Encycle Corporation) v. eCurv, Inc., (CASD). Representation of REGEN/Encycle in patent litigation involving energy management.

Silicon Storage Technology, Inc. v. National Union Fire Insurance Co. of Pittsburgh, PA et al., (CAND). Representation of Silicon Storage
Technology in an insurance coverage matter arising from settlement of trade secret litigation.

Silicon Storage Technology, Inc. v. Telefunken, (CAND). Representation of Silicon Storage Technology in patent litigation relating to process technology for memory devices.

Silicon Storage Technology, Inc. v. Intersil Corporation, et al. , (CAND). Representation of Silicon Storage Technology in this declaratory judgment action involving EEPROM and flash memory devices.

In the Matter of Certain Set-Top Boxes, Gateways, Bridges, and Adapters and Components Thereof, (ITC). Representation of Entropic Communications in this ITC investigation brought by ViXS Systems concerning set-top boxes, gateways, and in-home networking.

ViXS Systems, Inc. v. Entropic Communications, Inc., et al., (CASD). Representation of Entropic Communications in patent litigation involving set-top boxes, gateways, and in-home networking.

Entropic Communications, Inc. v. ViXS Systems, Inc., (CASD). Representation of Entropic Communications in patent litigation involving MoCA patents.

Blue Spike, LLC v. Texas Instruments, et al., (TXED). Representation of Entropic Communications in patent litigation involving automatic content recognition hardware and software.

In the Matter of Certain Digital Media Devices, Including Televisions, Blu-Ray Disc Players, Home Theater Systems, Tablets, and Mobile Phones, Components Thereof, and Associated Software, (ITC). Representation of Samsung in this ITC investigation concerning smartphones, smart TVs, and applications relating to sharing media and location-based services.

In the Matter of Certain Semiconductor Integrated Circuit Devices and Products, (ITC). Representation of Microchip Technology in this ITC investigation involving integrated circuit devices (chips).

Microchip Technology v. Intersil Corporation (AZD). Representation of Microchip Technology in this patent litigation involving integrated circuit devices (chips).

Greenliant Systems, Inc. v. Xicor LLC, (Fed. Cir.). Successfully argued at the Federal Circuit Court of Appeals for affirmance of the district court’s grant of summary judgment of invalidity of the asserted patent relating to EE-PROM and flash memory technology.

Microchip Technology v. LSI Corporation, (AZD). Representation of Microchip Technology in this declaratory judgment action for non-infringement and invalidity of the named patents.

Finisar Corporation v. Source Photonics, Inc. et al., (CAND). Representation of Source Photonics in patent litigation involving fiber optic components and modules used in telecommunication systems and data communication networks.

In the Matter of Certain Semiconductor Integrated Circuits Using Tungsten Metallization and Products Containing Same, (ITC). Representation of UMC, ProMOS, Microchip, and Microna in this ITC investigation concerning the use of tungsten metallization in semiconductor integratedcircuits.

Advanced Micro Devices v. Samsung, (CAND). Representation of Samsung in patent litigation involving circuit, microprocessor, and process patents.

Fortinet, Inc. v. Trend Micro Incorporated, (CAND). Representation of Trend Micro in patent litigation concerning anti-virus technology.

In re Certain Flash Memory Controllers, Drives, Memory Cards, and Media Players and Products Containing Same, (ITC). Representation of multiple respondents in this ITC investigation brought by SanDisk concerning flash memory devices.

Microchip v. ZiLOG, (AZD). Representation of Microchip in this lawsuit involving three Microchip microcontroller patents. These patents relate to reducing the pin count for microcontrollers.

Microchip v. Luminary Micro, (AZD). Representation of Microchip in this lawsuit involving three Microchip microcontroller patents. These patents relate to reducing the pin count for microcontrollers.

Maxim Integrated Products v. Freescale Semiconductor (CAND). Representation of Maxim in this action for declaratory judgment of no patent infringement.

Disc Link v. Oracle et al. (TXED). Representation of a group of defendants, including SAP, CA, Kodak, Altera, Novell and Sonic Solutions, in patent liti- gation regarding hyperlink technology.

Azul v. Sun Microsystems (CAND). Representation of Azul in litigation involving alleged trade secrets and alleged patent infringement.

ArrayComm LLC v. Atheros Communications Inc. (TXED). Representation of ArrayComm in a patent infringement suit involving three telecommunications patents relating to spatial multiplexing of signals to/from an antenna array.

Overture Services, Inc. v. Google Inc. (CAND). Representation of Yahoo! subsidiary Overture Services in a lawsuit alleging infringement of Overture’s pioneering paid search patent by Google’s top revenue-producing Internet advertising services. In a highly-publicized settlement, Google took a license to this patent and several related patents.

Overture Services, Inc. v. FindWhat.com, Inc. (CACD). Representation of Overture in a patent infringement lawsuit brought against FindWhat.com relating to Overture’s paid search technology.

Analog Devices v. Maxim Integrated Products (N.C. Super. Ct.). Representation of Maxim in trade secret litigation involving analog-to-digital converters.

Linear Technology Corp. v. Maxim Integrated Products. (CAND). Representation of Maxim in this patent infringement litigation related to voltage regulators.

Maxim Integrated Products v. Semtech Corp. (CAND). Representation of Maxim in patent infringement litigation alleging infringement of Maxim’s voltage regulator patents by Semtech.

Atmel Corporation v. Agere Systems, Inc. (CAND). Representation of Atmel in this patent infringement case involving digital signal processing chips.

Agere Systems, Inc. v. Atmel Corporation, (PAED). Representation of Atmel in this patent infringement case.

U.S. Philips v. Microchip, (AZD). Representation of Microchip in this patent infringement litigation involving serial bus interfaces.

U.S. Philips v. Cypress, (NYSD). Representation of Cypress Semiconductor Corporation in patent infringement litigation involving serial bus interfaces.

Recent Presentations and Publications

“Patent Eligibility: Navigating the Supreme Court’s 2016 Decisions and Its Impacts LIVE Webcast,” broadcast by The Knowledge Group, LLC, April 19, 2017.

Are the Tides Turning for Motions to Amend Claims in IPR Proceedings?,
IP Law Blog, April 13, 2017.

One Is Not Enough for Patent Infringement Under 35 U.S.C. §271(f)(1), IP Law Blog, March 2, 2017.

Federal Circuit Requires Standing to Appeal PTAB’s Final Decisions
Two Key Things You Need to Know About the 2016 Federal Rule Changes,
IP Law Blog, January 19, 2017.

“What Every In-House Attorney Should Know About IP and is Afraid to Ask
– Part Two: Patents and Trade Secrets,” presentation to the Association of Corporate Counsel- San Diego Chapter, November 2016.

Can You Appeal the PTAB’s Decision to Institute Review of Patent Claims on Grounds Not Raised in an IPR, PGR, or CBM Petition? , IP Law Blog, October 27, 2016.

Is the Technology for Self-Driving Cars Patent-Eligible? , IP Law Blog,
September 15, 2016.

“What Every In-House Attorney Should Know About IP and is Afraid to Ask – Part One: Copyrights and Trademarks,” presentation to the Association of Corporate Counsel- San Diego Chapter, August 2016.

Wearable Technology Raises Concerns Regarding IP, Data Privacy and Data Security, IP Law Blog, August 4, 2016

The Supreme Court Rules the PTAB and District Courts Can Continue to Apply Different Standards for Interpreting Patent Claims, IP Law Blog, June 21, 2016.

“Patent Eligibility: Navigating the Supreme Court’s Recent Decisions – 2016 Live Webcast,” broadcast by The Knowledge Group, LLC, June 2016.

New Federal Trade Secret Law Takes Effect! , IP Law Blog, May 31, 2016.

Are Pins, Posts, Tweets and Likes Appropriate for Use in Selecting Jurors? , IP Law Blog, April 1, 2016.

The Federal Circuit Finds Foreign Sales Do Not Exhaust Patent Rights, IP Law Blog, February 19, 2016.

“Emerging Issues: Reconsidering Intellectual Property in Cloud Computing in 2016 LIVE Webcast,” November 2015.

 

 

 

Education

J.D., summa cum laude, University of Arizona

Arizona Law Review, Articles Editor

Order of the Coif

National Moot Court Team

Ph.D., University of Texas, Electrical Engineering

M.S., University of Texas, Electrical Engineering

B.S., University of Texas, Electrical Engineering

Events

News

Blog

Affiliations

Institute of Electrical and Electronics Engineers (IEEE)
Senior Member

San Diego Intellectual Property Law Association (SDIPLA)
Immediate Past President and Board Member

Awards

The Best Lawyers in America ®, 2018, San Diego, Litigation – Intellectual Property

San Diego Super Lawyer, 2014, 2015, 2016 & 2017