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Barcelo, Harrison & Walker, LLP

  • Our Team
    • Reynaldo C. Barceló
    • Joshua C. Harrison
    • David B. Walker
    • Guadalupe M. Garcia
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    • IP Disputes & Litigation
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IP Disputes & Litigation

Clearance Searches & Opinions

Businesses often want to know if their next product will be clear of their competitors’ patent claims, or if their continued sales are infringing some patent that has been brought to their attention. A clearance search is a comparison of a client’s product, service, or brand against the known or searchable intellectual property rights of others, for example a competitor, vendor, or customer. Our clients may request or benefit from a clearance search to support decisions regarding product or logo design, design-around efforts, corporate acquisitions, supplier choices and agreements, customer negotiations, determining appropriate settlement terms for infringement litigation, or other business and legal situations.

We have the credentials and experience to provide our clients with clearance opinions and right-to-use investigations that they can reasonably rely upon to manage business and litigation risk.

Patent Invalidity Searches & Opinions

Often the USPTO does not find the closest prior art before granting a patent. Although that may smooth the path to allowance of a pending patent application, it may adversely affect the enforceability of the issued patent. For example, a patent owner who has invested in enforcing an intellectual property asset may learn, deep into licensing negotiations or an infringement litigation, that the validity of the asserted patent claims are actually threatened by closer prior art than that found by the USPTO examiner. Knowing about such prior art earlier during patent prosecution could have enabled that patent owner, then a patent applicant, to have strategically amended the then-pending claims to avoid invalidity, while perhaps preserving an infringement read on a competitor’s product. We can conduct or commission a thorough pre-filing prior art search for patent applicants that can result in a more enforceable patent for use in later licensing negotiations or litigation.

For defendantse can conduct or commission a thorough prior art search, for example during or in anticipation of litigation, which may identify invalidating prior art that can be used to motivate favorable settlement or threaten and dissuade a prospective plaintiff from asserting a subject patent against our client in the first place. We may also use the results of such a prior art search to challenge the patentability of the issued patent claims or an adversary or third party in a post-grant proceeding such as an inter-partes review. Doing so may avoid, stay, or help settle more expensive litigation proceedings.

Patent Litigation & Litigation Support - Plaintiff & Defendants

We handle simple and complex patent disputes and represent patent owners, accused infringers, licensees and licensors - from individual investors to large corporate entities - who are asserting or defending against patent claims. Our clients come to us from a variety of different technology fields or market sectors, and the intellectual property litigations for which we assist them may arise from a variety of commercial activities, agreements, or contexts. Plaintiffs whom we represent may threaten or initiate patent litigation to support one of many possible business goals. In every case, we tailor and limit our legal services, litigation and otherwise, in careful consideration of the client’s ultimate business objective.

Our legal team is made up of litigators who have substantial experience in preparing technology disputes for successful trial.

Pre-Litigation Negotiations

Sound legal advice and representation during the events and negotiations that precede patent litigation can greatly affect the outcome. In many cases, litigation can be avoided altogether in the pre-litigation phase of a dispute, if an adversary is guided to make a realistic assessment of the case-specific risks, costs, and potential benefits. On the other hand, some admissions that an inexperienced attorney might make during a pre-litigation "letter war" can compromise success later in court.

We carefully represent and advise our clients through this critical early phase of a patent dispute - the phase when wise decisions and careful communications can often achieve a positive result at a far lower cost than litigation - and we often carefully lead our client's adversaries to doubt their prospects in future litigation.

Pre-trial Case Prep & Motion Practice

Pre-Trial Case Prep & Motion Practice in patent litigation cases can include drafting and filing complaints or answers, document discovery and related disputes and motions, fact and expert witness depositions, refinement of party contentions, claim construction briefings and related hearings, etc.

In every patent litigation matter, we are careful, experienced, and competent to develop the most favorable pre-trial record for our client.

Tech Expert Declarations & Depositions

Technical experts are often used in patent litigation or post-grant proceedings to inform the court about factual disputes, yet these technical experts rarely agree. A successful litigator can use pre-trial motion practice and depositions to expose inaccuracies or misstatements by the opposing expert, and then help the court to recognize the credibility of expert testimony or opinions that favor our client’s position. Doing that can be difficult for attorneys that lack technical skills and education. All of our partners have more than one engineering degree, engineering industry experience prior to the practice of law, and patent litigation experience in many scientific and engineering matters.

Our technical expertise means we are very effective at deposing and cross-examining our opponent’s technical experts to ensure that their opinions don’t credibly deviate from the truth. Our technical expertise can also help our client’s technical experts to effectively communicate their opinions, and testify at depositions with reduced risk of being contradicted at trial.

Settlement Negotiations & ADR

Often settlement negotiations and alternative dispute resolution (ADR) proceedings are the first or best opportunity for the weaknesses of the opposing party’s case to be presented to the opposing party directly, without interference from opposing counsel.

We help our clients achieve beneficial settlements by effectively communicating the strengths of our client’s case during negotiations and ADR, while ensuring that the opposing party recognizes and understands the weaknesses in their case.

Our clients also rely on us to craft, revise, and confirm the terms of settlement, for example to reduce the risk that a settlement might not end the dispute permanently.

Appellate Litigation

Often one or both parties in patent litigation or post-grant procedures disagree with one or more of the court’s rulings, leading to appeal. Patent appeals often rely upon a complex closed universe of technological and procedural facts, and both substantive and procedural law. Our expert attorneys have the knowledge and experience in law, civil procedure, and technology, to guide your appellate case to a successful conclusion..

We prepare and file appellate briefs on behalf of our clients (if necessary), particularly in cases before the U.S. Court of Appeals for the Federal Circuit, and we prepare for and conduct all aspects of oral argument as well.

Why Choose Us

We have extensive experience in a wide range of legal and business issues related to intellectual property.
Each of our partners holds both advanced engineering and legal degrees from the best universities,
and has supplemented his academic credentials with years of technical experience. We combine
top-tier big law firm and Fortune 500 in-house expertise and experience with the attitude
and responsiveness that is only available from a smaller boutique law firm.

Learn More About Us >

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Patent Applications Expand

Patents convey the right to exclude others from making, using or selling the inventions claimed in the patents in the country or countries that issued the patents. To enjoy the benefits of these patent rights, your business should own its patents. However, under U.S. law, only an inventor or an assignee can own a patent and businesses cannot be listed as an inventor. Patent assignment is the legal mechanism to transfer ownership from inventors to your business or from one business to another.

 

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IP Disputes & Litigation Expand

A patent application includes certain important sections that include, for example, the abstract, the specification, the drawings, and the claims. Each of these sections can be important in understanding an invention, but it is the claims that describe the legal metes and bounds of a particular invention. Accordingly, it is important that each section is well-drafted to provide the best support for the claims; it will be the claims that will be most scrutinized by the USPTO during examination of the patent application.

 

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Patent Licensing & Portfolios Expand

Patents convey the right to exclude others from making, using or selling the inventions claimed in the patents in the country or countries that issued the patents. A patent owner may choose to retain those rights to prevent others from practicing the inventions, particularly when those inventions are embodied in products produced or services provided by the patent owner. Alternately or additionally, the patent owner may instead choose to license some or all of those rights to other entities to generate licensing revenues. Depending on the licensing strategy, license agreements may convey exclusive rights to a single licensee or non-exclusive rights to multiple licensees.

 

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Patent Pools & Standards Expand

Development of a wide range of technologies are based on technical standards adopted by industry organizations in coordination with the companies responsible for the development of the technology and the products that ultimately incorporate and apply the industry standard. Early adoption and consistent application of industry standards for a technology allows consumers to have confidence that products incorporating the standard will be interoperable with each other and any content conforming to the standard and produced for use with those products.

 

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Post Grant Proceedings Expand

Patents grant the exclusive right to make, use, and sell an invention. But such rights are limited to the jurisdictions that grant them. For example, United States patent rights do not extend beyond its borders. In order to obtain patent protection outside of the United States, patent applications must be filed outside of the US. Filing in the US and in foreign jurisdictions can be very expensive. Accordingly, inventors must decide on a the best investment strategy for protecting their invention, marketing and developing their product lines, and maintaining or increasing the valuation of their company short- or long-term.

 

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Frequently Asked Questions

To resolve disputes are there alternatives to litigation? Expand

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How do competent attorneys prepare an expert witness for testifying in patent litigation or post-grant proceedings? Expand

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How is appellate litigation different from trial? Expand

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How do USPTO Inter-Partes Review (IPR) proceedings differ from asserting patent invalidity in a federal district court? Expand

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Why do so many patent litigation defendants opt to initiate an Inter-Partes Review (IPR) of the asserted patent(s)? Expand

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What is the difference between litigation, arbitration, and mediation? Expand

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Is there such a thing as a global patent? Expand

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Can I enforce my intellectual property rights outside of the United States? Expand

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Should I apply for a foreign patent? Expand

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What is an invention disclosure and why is it important? Expand

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How do patent attorneys draft a patent application? Expand

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What is the difference between patent drafting versus patent prosecution? Expand

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How do I obtain business value from a patent portfolio? Expand

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How does a patent assignment differ from a license? Expand

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Can patent rights be used to prevent me from using a standardized technology or selling a product that conforms to an industry standard? Expand

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What are patent pools and what purposes do they serve? Expand

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About Us

We provide premier legal services to technology companies facing
tough legal challenges.
• • • • • • • • • • • • • •

Barcelo, Harrison & Walker, LLC

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Newport Beach, CA

2901 West Coast Hwy
Suite 200
Newport Beach, CA 92663

Phone: (949) 340-9736
Fax: (949) 258-5752
rbarcelo@patentlaw.us
jharrison@patentlaw.us

Palo Alto, CA

2225 E. Bayshore Road
Suite 200
Palo Alto, CA 94303

Phone: (650) 585-2933
Fax: (650) 331-0184
gmgarcia@patentlaw.us

Washington, D.C.

1629 K Street NW
Suite 300
Washington D.C. 20006

Phone: (202) 567-6778
Fax: (949) 258-5752
dwalker@patentlaw.us

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