Experience
LEGAL
WATERSHED IP LAW, Philadelphia, PA
Of Counsel, July 2023 – Present
- Manage U.S. and European patent litigation
- Select optimum patents and claims for litigation
- Review and edit motions including infringement contentions, validity arguments, claim construction arguments
- Licensing Negotiation
- Present patent claim charts to licensees, establishing infringement and validity
- Respond to non-infringement and invalidity statements in writing and in person
LAW OFFICE OF DAVID HUFFAKER, Bellevue, WA
Owner, November 2022 – Present
- Licensing Negotiation
- Present patent claim charts to licensees, establishing infringement and validity
- Respond to non-infringement and invalidity statements in writing and in person
- Draft and negotiate patent license terms
INTELLECTUAL VENTURES, Bellevue, WA
Intellectual Property Attorney Director, April 2010 – March 2022
- Developed and implemented licensing programs
- Drove strategic customer relationships including negotiating key deal terms and drafting license agreements
- Presented patent claim charts to licensees, establishing infringement, validity, and standards setting organization (SSO) obligations
- Collaborated with teams of engineers and business executives to drive transactions
- Strategic patent prosecution
- Drafted patent claims
- Crafted arguments for office action responses
- Developed inter partes review (IPR) responses
- Managed outside counsel including review of responses and oversight of invoices
- Improved interdepartmental legal understanding and coordination
- Developed, presented and managed internal legal seminars with engineering and business development teams
- Coordinated input from engineering, business development and marketing teams to optimize decision making on divestiture questions
- Litigation advice and counseling
- Advised executive management regarding litigation options, including selection of patents for assertion
- Demonstrated patent value including infringement and damages assessments
INTELLECTUAL VENTURES, Bellevue, WA
Senior Patent Attorney, March 2009 – April 2010
- Lead patent prosecution counsel for wireless communications
- Mined patent portfolio for patent license candidates
- Recommended patent portfolios for acquisition
- Reported patent portfolio status and progress
- Managed wireless communications patent portfolio
- Managed outside counsel relationships including selection of counsel and continuous improvement of work product quality
SYMANTEC CORPORATION, Cupertino, CA
Senior Corporate Counsel, April 2008 – January 2009
- Intellectual property transactions and counseling
- Negotiated agreements for a Department of Defense software development project and a corporate acquisition
- Investigated and prepared for an employee wrongful termination suit
- Open source software analysis and approval
- Chaired Patent Committee
- Directed discussion to consider business strategic significance, uncover prior art and explore the breadth of possible patent claims
- Patent mining and mapping
- Initiated patent reviews with product teams and developed patent strategy
- Educated engineering teams about patent priorities and issues
QUALCOMM INCORPORATED, San Diego, CA
Patent Counsel, October 2005 – March 2008
- Licensing and intellectual property counseling
- Led engineering and legal team reviewing a patent portfolio for purchase and counseled the COO regarding the purchase
- Developed company policy for university intellectual property ownership
- Drafted a product user group agreement
- Division lead patent counsel
- Chaired patent review board for evaluating inventor submissions
- Mapped acquired company patent portfolio of 175 patent assets to communication standards
- Created a comprehensive patent strategy to ensure patenting all aspects of engineering projects in a newly acquired company
- Drafted and prosecuted standards and implementation patent applications and office action responses
- Standards: 3GPP LTE, 3GPP2, IEEE 802.11, IEEE 802.20, Ultra Wideband, Mobile Display Digital Interface
- Network architecture: mobile IP, authentication, authorization and accounting
- PHY and MAC Layers: Channel estimation, modulation, channel coding, signal acquisition, synchronization, call setup, wireless paging, power control
KYOCERA WIRELESS CORP., San Diego, CA
Intellectual Property Counsel, March 2001 – October 2005
- Negotiated and drafted a technology joint development agreement
- Litigation
- Generated and presented patent counter assertion in a cross-license
- Developed, wrote and presented non-infringement claim charts, invalidity claim charts and counter-assertion claim charts to a patent aggressor
- Wrote and successfully argued a motion for summary judgment
- Drafted and prosecuted wireless communication system, hardware and software patent applications and office action responses
- Software: call processing, power control, operating systems, user interface platforms, animation
- RF components: antennas, band pass filters, power amplifiers, low noise amplifiers
- Digital hardware: baseband circuits, memory wait states, memory, power supplies
- Chaired Patent Committee including strategy formulation and invention disclosure management
- Supervised patent agent, including work assignment, review and instruction
- Trademark prosecution
LYON AND LYON, LLP, San Diego, CA
Associate, May 2000 – March 2001
- Drafted and prosecuted patent applications and office action responses
- Wireless communications, photo-sensors and processors, semiconductor design software, pressure and viscosity sensors, medical devices, internet software
ENGINEERING
STELLEX MICROWAVE ELECTRONICS, INC., Palo Alto, CA
Research and Development Engineer, January 2000 – May 2000
- Broadband transceiver development
- Built and tested gigahertz resonators
- Phase noise analysis and reduction
CHARLES EVANS & ASSOCIATES, Redwood City, CA
Materials Analyst, December 1995 – January 2000
- Semiconductor materials analysis
- Secondary ion mass spectrometry (SIMS)
- Total reflection X-ray fluorescence (TXRF) spectroscopy