Legal
Watershed IP Law, Philadelphia, PA, July 2023 to present
Of Counsel
- 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, November 2022 to present
Owner
- 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, April 2010 to March 2022
Intellectual Property Attorney Director
- 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, March 2009 to April 2010
Senior Patent Attorney
- 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, April 2008 to January 2009
Senior Corporate Counsel
- 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, October 2005 to March 2008
Patent Counsel
- 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, March 2001 to October 2005
Intellectual Property Counsel
- 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, May 2000 to March 2001
Associate
- 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, January 2000 to May 2000
Research and Development Engineer
- Broadband transceiver development
- Built and tested gigahertz resonators
- Phase noise analysis and reduction
Charles Evans & Associates, Redwood City, CA, December 1995 to January 2000
Materials Analyst
- Semiconductor materials analysis
- Secondary ion mass spectrometry (SIMS)
- Total reflection X-ray fluorescence (TXRF) spectroscopy