​© 2018 AUTOMOTIVE DESIGN ANALYSIS

Intellectual Property Services

Intellectual Property Services and Experiences Include:
  • Evaluation of patent infringement/non-infringement, and patent validity/invalidity, including America Invents Act, and 101, 102, 103, 112 and prior art arguments including analyses under literal infringement and the under the doctrine of equivalents.  Prosecution history estoppel.

  • Development of claim charts for Markman hearings, ITC cases, and federal cases. Expert reports, depositions, hearing and trial testimony.

  • Technology standards boards and licensing authorities, antitrust/DOJ, technology development and transfer, patents, trademarks, trade secrets, copyrights, data rights, trademark infringement/dilution, unfair competition/trade, false/deceptive advertising Lanham Act, Class Actions, etc.  

  • Georgia-Pacific factors analyses for determining reasonable royalty for plaintiff or defense.  Willful infringement arguments.

  • Development and Analysis of Markman briefs, claim charts, conducting prior art searches, and the analyses of patent file wrappers.

  • Discovery and motion practice, summary judgment proceedings, evidentiary hearings, motions in limine, opposition and reply briefs.

  • Patent Cooperation Treaty Applications, U.S. applications, international filings.  Post-Grant Review, Inter Partes Review, Patent Trial and Appeal Board.

  • Prior art/patentability research in technical literature, publications, product specifications, and dissertations to analyze validity and obviousness.

  • Litigation support and technology education in patent disputes, Federal Cases, ITC cases, & re-examinations, derivation proceedings, prior user rights.

  • Represent clients in all aspects of electrical, chemical, software, computers, algorithms, microprocessors, & automotive components/systems involving all aspects of intellectual property litigation.  Cellular, telecommunication, GPS/navigation, mobile telematics, information/data transmission, Human machine interfaces, etc.

  • Deposition, hearing and trial experience in state and federal jurisdictions throughout the United States.

  • Cases include: Magna v. TRW; Bradley v. Fontaine Trailer; ATI; Remy v. WAI (ITC); Lucent/Gateway/MPEG; Tendler v. Onstar; Acer/Gateway v. HP (ITC); Mobileye Inc. v. Picutup Corp.; Transtex v. Ridge; KAR v. Ford; Speedguage v. Inthinc; Zoao Controls; Freedom Motors v. Allegiant; Magna Mirrors v. TRW; AVS v. Takata et al. (IPR); VOT v. Ford; Voxx v. Johnson Safety; Bosch v. Autel; Dorman v. Paccar & other cases

Additional Intellectual Property Information:

I have deposition, hearing and trial experience in state and federal jurisdictions throughout the United States.   Additional areas of experience include:

  • Evaluation of patent infringement/non-infringement, and patent validity/invalidity, including America Invents Act & 101, 102, 103, 112 and prior art arguments.  Analyses performed under literal infringement and the doctrine of equivalents. Prosecution History Estoppel.

  • Development and Analysis of claim charts for Markman hearings, ITC cases, & federal cases, and Inter Partes reviews.

  • Expert reports, depositions, hearing and trial testimony.

  • Intellectual property, including technology standards boards and licensing authorities, antitrust/DOJ, technology development and transfer, patents, trademarks, trade secrets, trademark infringement/dilution, unfair competition/trade, false/deceptive advertising, Lanham Act, copyrights.  Analyses of designs for Trade secrets miss-appropriation.

  • Contracts negotiation, contract drafting/interpretation, and IP related clauses, licensing indemnification, business financial impact assessments, valuation & potential ROI.  Georgia-Pacific factors analyses for determining reasonable royalty for plaintiff or defense.  Willful infringement arguments. Goodwill damages.  Class actions.

  • Developing and analyzing Markman briefs, conduct prior art searches, and the analyses of patent file wrappers.  

  • Contracts, licenses, joint development agreements, statements of work.

  • All areas of discovery and motion practice as well as trial and settlement procedures. 

  • Summary judgment proceedings, evidentiary hearings, motions in limine, opposition & reply reports, briefs, claim charts.

  • Analysis and assessment of industry trends - followed by working with product development activities, program managers, and cross-functional teams for new product innovation and to implement strategic design changes and the development of new products.

  • Commercialization of innovations and intellectual property.  Assessment of the engineering development/product development necessary and likelihood of innovations and/or patented inventions to become commercial products.

  • Patent Cooperation Treaty Applications, U.S. applications, & international filings. Post-Grant Review, Inter Partes Review.  Patent Drafting, Prosecution, and USPTO Office Action responses.
     

  • Clarification of prior art in technical literature, publications,
    ​product specifications, and dissertations to analyze validity and obviousness.

  • Specification and literature analysis of scientific and engineering patents.

  • Product and technology analysis, patent portfolios, patentability research.

  • Litigation support and technology education in patent disputes, claim charts, patent reexaminations, derivation proceedings, prior user rights.

  • Technology Contracts, Freedom of Operation and Infringement Analyses. Technology Standards Groups and Licensing Authorities.

  • All Aspects of Discovery and Disclosure Requirements, e-Discovery, Discovery Policy and Strategy. Document Production and Accurate/Consistent Response Preparation.

  • Flesh out and convey the novel and innovative arguments for new technologies and inventions, and understand and convey technical similarities and differences for infringement analyses.

  • Design Validation Plans and Reports, Failure Modes and Effects Analyses, product prove-out, design verification, reliability and durability analyses. Represent clients in all aspects of electrical, chemical, software, source code/algorithm methods/processes, computers, microprocessors, & automotive components & systems involving all aspects of intellectual property litigation. Safety systems, accident avoidance, telematics/telecommunications, mobile cellular information data transmission (transmitters/receivers), traffic/weather, communication protocols, radio optical satellite wireless mediums, GPS, navigation, monitoring/surveillance/security/tracking systems, camera/vision/optical systems, fleet management systems, Bluetooth, smartphones, truck/commercial/recreational vehicles, construction/excavation, electrical/electronic, diagnostics.  Human machine interfaces/displays, diagnostics, warnings.  Data/ storage/retrieval.  Workplace safety.

Cases Include:

  • Voxx v. Johnson Safety
     

  • Mobileye v. iOnRoad
     

  • Transtex v. Ridge
     

  • Bradley et al v. Fontaine Trailer
     

  • Joao Controls
     

  • Bosch v. Autel
     

  • Lucent/MPT v. Gateway MPEG proceedings
     

  • KAR v. Ford
     

  • Remy v. WAI et al (ITC)
     

  • Speedguage v. Inthinc
     

  • Tendler v. Onstar
     

  • ATI v. Siemens et al
     

  • Hagenbuch v. Toyota (IPR)
     

  • Vehicle Interface Technologies v. Ford, Jaguar
     

  • Freedom Motors v. Allegiant
     

  • Dorman v. Paccar (Design Patents)
     

  • Magna v. TRW