Electrical, Mechanical, and Computer Science Prosecution

Businesses today operate in a global marketplace of ideas in which protecting intellectual property isn’t simply a necessary defensive exercise, but a vital component of strategy that can define the efforts of an entire organization. Our Electrical, Mechanical, and Computer Software Prosecution team is comprised of more than 40 registered patent attorneys and agents, many of whom are recognized leaders in areas that include semiconductors, software, navigation systems, medical devices, aeronautics, and wireless communications and location technologies. Many of our team members hold advanced degrees in electrical, mechanical, and computer engineering fields and have worked in industry as engineers so they have a technical, as well as a legal understanding, of these industries.

Beyond our stellar track record in securing patent protection, our customized, big-picture management of intellectual property portfolios for a client roster that ranges from multinational companies, including 10 of the Fortune 25, to emerging businesses across numerous industries sets us apart from other law firms. By aligning the development of intellectual property (IP) rights with our clients’ overall business plan, we help clients fully understand the value of their patent portfolios and realize their full potential. We counsel clients on strategic use of intellectual property, including developing strategies for maximizing a client's intellectual property in a given market, as well as patent preparation and prosecution.

We meet with research and development personnel during the development of new products and technologies to help identify subject matter that can be patented, cultivate a strategy for protecting the client’s intellectual property, and determine applications that are positioned to have the greatest value by employing a combination of patent, trademark, copyright, and trade secret strategies. As a result, when challenges arise, we meet them from a vantage point of deep knowledge and understanding.

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We routinely partner with a wide network of international IP firms to help clients secure patents in Europe, the United Kingdom, Japan, China, Korea, Latin America, and other countries around the world. As our clients increasingly do business worldwide, foreign patents have become crucial to protecting their assets and increasing their market share and profit margins. In addition, we use sophisticated tools to conduct an ongoing cost-benefit analysis to assist our clients in deciding which foreign patents to maintain.

Our group includes some of the leading post-grant practitioners in the country, having successfully prosecuted hundreds of ex parte and inter partes reexaminations and interferences prior to enactment of the America Invents Act, and now one of the leading filers of inter partes reviews and covered business method patent reviews under the America Invents Act.

Electrical

Our electrical patent attorneys have prosecuted patents in technologies ranging from automotive diagnostic test equipment to z-wave home automation devices and everything in between. We represent firms that develop and market electronic products and services, including cable communications, internet backbone equipment, computer hardware, semiconductor mask repair technologies, peripheral devices, magnetic media, instrumentation, electrical production equipment, electrical medical devices, electrical consumer products, telecommunication devices, electrical connectors, and a broad range of industrial products.

Mechanical

We have a deep bench of mechanical patent attorneys who regularly assist our clients in obtaining both utility and design patent protection for their mechanical inventions. Our experience spans the very largest devices, such as construction equipment, to the very smallest, with a particular focus in nanotechnologies. Our experience cuts across all industries, with attorneys working in fields as disparate as medical devices and oil well drilling.

Computer Software

Building a useful patent portfolio, particularly in the rapidly-changing computer field, begins with identifying a client's business goals and tailoring a patent strategy to fit those goals. Whether in underground utility locating equipment or large scale remote access servers, software is the core of many of our clients’ businesses and our attorneys are well-versed in protecting software innovations. In addition to Internet and software-related inventions, our attorneys assist clients in obtaining business method patents in the insurance and banking fields.

Our firm's attorneys also assist clients in licensing transactions to monetize their own intellectual property assets, as well as to obtain rights from third parties. We evaluate computer-related products and intellectual property portfolios to help clients enter licensing negotiations with a true understanding of their position. Some of the areas we have worked in include: digital rights management, operating systems, compilers, and Internet-based services.

Professionals

Name Title Office Email
Margaret A. Abernathy Associate Washington, D.C.
Hussein Akhavannik Partner Washington, D.C.
Michael E. Anderson Partner Washington, D.C.
David R. Bailey Partner Philadelphia
Mark E. Braun Associate Philadelphia
Barry E. Bretschneider Of Counsel Washington, D.C.
Craig M. Brown Associate Philadelphia
Erin C. Caldwell Associate Atlanta
Eduardo M. Carreras Of Counsel Atlanta
Timothy D. Casey Partner Seattle
Jack Chang Associate Seattle
Thomas J. Clare Associate Philadelphia
Brendan E. Clark Associate Cleveland
Craig L. Cupid Associate Atlanta
Erdal R. Dervis Partner Washington, D.C.
John P. Donohue Jr. Partner Philadelphia
Jeremy M. Dukmen Associate Philadelphia
Sarah C. Dukmen Associate Philadelphia
Michael P. Dunnam Partner Philadelphia
Christopher M. Durkee Counsel Atlanta
Dmitry Dymarsky Associate Philadelphia
Kenneth R. Eiferman Partner Philadelphia
Stephen S. Fabry Partner Washington, D.C.
Adam A. Fleckenstein Associate Atlanta
Adam J. Forman Partner Philadelphia
Hilmar L. Fricke Of Counsel Philadelphia
Harold H. Fullmer Partner Philadelphia
Han Gim Partner Seattle
Gregory A. Grissett Associate Philadelphia
Robert L. Hails Jr. Partner Washington, D.C.
Thomas W. Hartin Associate Philadelphia
John S. Hilten Partner Washington, D.C.
Herbert E. Hoffman Associate Philadelphia
P. Alan Larson Counsel Washington, D.C.
Alan Leung Associate Washington, D.C.
Eugene Lieberstein Of Counsel New York
Kassity L. Mai Associate Washington, D.C.
David A. Mancino Partner Cincinnati
Mark F. Mashack Associate Washington, D.C.
Shannon V. McCue Partner Cleveland
Brandon S. Mecham Associate Philadelphia
Phong D. Nguyen Partner Washington, D.C.
Joseph P. O'Malley Counsel Philadelphia
John M. Paolino Counsel Philadelphia
Tayan B. Patel Partner Washington, D.C.
William C. Powell Associate Seattle
Aaron B. Rabinowitz Partner Philadelphia
Michael J. Riesen Partner Atlanta
Steven J. Rocci Partner Philadelphia
Jeffrey H. Rosedale Ph.D. Partner Philadelphia
Douglas S. Rupert Partner Chicago
Steven B. Samuels Partner Philadelphia
Nikki L. Sanford Associate Seattle
Brian L. Saunders Associate Philadelphia
David C. Schleifer Associate Seattle
John H. Scott III Associate Seattle
Shubhrangshu Sengupta Patent Agent Washington, D.C.
Kenneth J. Sheehan Partner Washington, D.C.
Charles K. Shih Associate Cincinnati
Scott S. Simpkins Associate Philadelphia
Michael D. Stein Partner Seattle
Michael J. Swope Partner Seattle
Miranda Aiqing Wang Technical Advisor Seattle
Theresa M. Weisenberger Associate Atlanta
Jonathan S. Werner Associate Washington, D.C.
Shawnna M. Yashar Partner Washington, D.C.

Recognition

  • BTI Client Service 30: BakerHostetler advanced 19 positions to #9 (2016)

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In The Blogs

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IP Intelligence: Insight on Intellectual Property
Federal Circuit looks to provisional patent application in determining claim scope
February 16, 2017
Differences between a provisional patent application and a nonprovisional application claiming priority to the provisional application may inform claim construction, following the Federal Circuit’s recent decision in MPHJ Tech v. Ricoh.[1]...
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IP Intelligence: Insight on Intellectual Property
When Obvious Isn’t Obvious: Personal Web Technologies
By Brendan E. Clark
February 15, 2017
On Valentine’s Day 2017, the Court of Appeals for the Federal Circuit vacated the Patent Trial and Appeal Board’s conclusions of obviousness in Personal Web Technologies, LLC due to insufficient analysis in the board’s decision. Judge...
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IP Intelligence: Insight on Intellectual Property
Licensees Stymied by Sovereign Immunity Both in Federal Court and at PTAB
By Allen M. Sokal
February 10, 2017
  Licensees Covidien LP, Medtronic PLC, and Medtronic, Inc., failed to obtain any relief, at least so far, in federal court or at the Patent Trial and Appeal Board (PTAB) because of parallel holdings that patent owner University of Florida...
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IP Intelligence: Insight on Intellectual Property
The Continuing “Evolution” of Alice: a GUI Example
January 19, 2017
On January 18, 2017, the Federal Circuit, in Trading Technologies International, Inc. v. CQG, Inc., No. 2016-1616 (Fed. Cir. Jan. 18, 2017) (NEWMAN, J.), issued a non-precedential decision affirming the district court’s holding that claims...
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IP Intelligence: Insight on Intellectual Property
Federal Circuit Provides Guidance on Divided Infringement, Inducement of Infringement, and Indefiniteness
By Allen M. Sokal
January 17, 2017
Patent owners will applaud the Federal Circuit’s latest pronouncement on divided infringement, inducement of infringement, and claim definiteness under 35 U.S.C. § 112. Eli Lilly & Co. v. Teva Parenteral Medicines, Inc., Appeal No...
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