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Of Counsel since 2015
Andrew has been involved in the preparation and prosecution of patents for both domestic and foreign clients in a wide range of technologies. A sampling of his experience includes electrical and semiconductor, health-related systems, computer systems, computer architecture, computer software, neural network and artificial intelligence, voice recognition, linguistics, automotive, database software, memory devices, navigation systems, plasma and LCD display systems, image sensors, digital and analog signal processing, data coding and decoding, optical systems, communications systems, wireless telecommunications, telecommunications systems, robotics systems, manufacturing and packaging systems, gaming systems, gesture recognition, user interfaces, consumer and industrial appliances, e-commerce systems, business method-related systems, medical devices/equipment, plumbing systems and lumber mill technology. By preparing and prosecuting patents in such a wide range of technologies, Andrew has developed the ability to quickly adapt to new technologies and to provide both pertinent and helpful advice.
Andrew has a passion for science and engineering, as well as new and emerging technologies. As a result, he is both effective and productive when working with inventors to take new ideas from conception, to patentable concept, to issued patent. Andrew is also experienced in negotiating efficiently with USPTO examiners, and is able to adapt to a multitude of personalities and communication styles.
Prior to joining HBW, Andrew served as an Associate at Wenderoth, Lind and Ponack, as well as at Jefferson IP, both located in Washington D.C. Andrew holds a J.D. from Whittier School of Law, graduating Magna Cum Laude. During law school, Andrew focused on intellectual property law, served as Vice President of the Intellectual Property Society, and held a Summer Associate position at Young & Basile in Troy, MI. Andrew also holds a B.S. in Electrical Engineering from Kettering University.
Andrew spent his pre-law career working at General Motors, where he served as a Project Engineer for a team involved with vehicle and controller simulation. As an undergraduate, Andrew was also employed by General Motors as a co-operative education student. Following General Motors, Andrew served as an Account Manager at dSPACE Inc., an engineering tools and services provider.
Andrew spent his pre-law career working at General Motors, where he served as a Project Engineer for a team involved with vehicle and controller simulation. As an undergraduate, Andrew was also employed by General Motors as a co-operative education student. Following General Motors, Andrew served as an Account Manager at dSPACE Inc., an engineering tools and services provider.
Andrew is admitted to the State Bar of the District of Columbia, and is registered to practice before the U.S. Patent and Trademark Office.
Of Counsel since 2015
Paul’s clients may be starting out, or may already hold extensive patent portfolios. Paul strives to identify and protect the unique aspects of his client’s strategic position to set his clients apart from their competitors. Paul directs his legal counsel at protecting client research investment and marketplace identity. His practice is focused on intellectual property counseling, primarily involving patent portfolio construction, strategy, prosecution and analysis. He is valued by clients and colleagues alike for his responsiveness, acuity of thought, and commitment to identifying and resolving potential patent-related problems before they can evolve into serious obstacles to profitability.
Prior to joining the firm, Paul served as Director of Intellectual Property at Leap Motion, Inc., where he created their IP strategy and built their patent portfolio of intellectual assets covering gesture control devices, systems and software. Paul also served as Director of Intellectual Property at Salesforce.com, Inc., a publicly-held and innovative cloud computing company, where he designed and implemented their worldwide IP program, including creating a patent portfolio for the company’s pioneering technology, settling patent litigation, concluding major patent cross license transactions, and building a team of IP professionals.
Prior to practicing law, Paul served as an Engineer/Programmer for IBM Corporation for more than a decade. At IBM, Paul chaired the Invention Review Board for the IBM Glendale Programming Laboratory; developed computer networking products, machine vision, robotics applications and industrial automation systems; as well as served as the technical leader of a team developing networking protocol interfaces to operating systems.
Paul’s tech industry and in-house counsel experience provide him with insight into the workings of businesses and specific industries enabling him to better serve his clients. He is keenly equipped to assist clients in the development of workable solutions, processes and procedures, because he has confronted the same issues and understands the client’s perspective.
Paul has extensive experience in representing clients with legal matters relating to computer hardware and software. This includes cloud computing, SaaS, web servers and web services, operating systems, file systems, encryption and e-commerce; gesture recognition; image processing; databases, DBMS and storage systems; telecommunications hardware and software including optical network switching, wireless networking and antennas and packet network rate and flow control; semiconductor processing equipment; medical devices; combinatorial chemistry and bioinformatics.
Paul is admitted practice in New York and California, as well as before the U.S. Patent and Trademark Office. He received his law degree from Boston University, and his undergraduate degree in Electrical Engineering and Applied Physics from Case Western Reserve University.
Fax: 650-712-0263
Warren espouses a market-driven approach to patent drafting, seeking to capture the market segment that the invention addresses. He believes that the best patents often are ones that ensure that only his client is able to make a marketing claim that is of value to customers. He is appreciated for executing precision and high-quality legal counsel both on time and on budget, and his direct communication style and vigilance for his clients’ interests have created relationships of trust with many clients over the years.
Warren is truly dedicated to serving as a trusted advisor and strategic partner, and is known not only for his legal and technical prowess, but also for his often fresh perspective and out-of-the-box thinking when navigating beyond obstacles and solving the problems his clients regularly encounter. Warren’s patent litigation experience early in his career distinguishes him from other patent practitioners, and has helped him to prepare and prosecute patent applications that have successfully survived punishing litigation and brought significant rewards for his clients.
Warren is involved in analyzing, drafting and prosecuting patents and patent applications, as well as in strategic portfolio management, rendering opinions, assisting in design-around efforts, and conducting due diligence studies. He advises clients in a variety of electrical and electronics-related fields, a sampling of which includes computer architectures, telecommunications hardware and software, semiconductor design, digital signal processing, microwave test instruments, discrete and integrated electronic circuitry, integrated optics, flat panel display technologies, computer software and object- and agent-oriented design, database software, speech and language processing, computer aided semiconductor design tools, superconducting electronics, neural networks, and image and video compression.
Warren is distinguished by Martindale-Hubbell as AV Preeminent. He holds a B.S. in Electrical Engineering, Magna Cum Laude, from the University of Rochester, as well as a J.D. from Cornell Law School, where he was Senior Editor of the Cornell International Law Journal. Warren is admitted to practice in both California and New York, as well as before the U.S. Patent and Trademark Office, the Court of Appeals for the Federal Circuit, U.S. District Courts for the Southern and Eastern Districts of New York, and the U.S. District Court for the Northern District of California. Warren is a member of Tau Beta Pi, IEEE, the American Bar Association, American Intellectual Property Law Association, and the San Mateo County Bar Association.
Prior to joining HBW as a Partner in 2001, Warren served as a Partner at Fliesler, Dubb, Meyer & Lovejoy LLP in San Francisco, and before that as an Associate at Kenyon & Kenyon in New York. In addition, Warren authored “International Patent Cooperation: The Next Step,” published in the Cornell International Law Journal as a study of the international patent system, which was also reprinted in the Modern Legal Systems Cyclopedia and in Intellectual Property Policy and International Negotiation.
Fax: 650-712-0263
Ernie is focused on asset building and problem solving. He consistently maintains perspective on how the law fits into his client’s larger commercial strategy. Ernie represents some of the most innovative organizations of today. His clients have ranged in size from multi-national corporations, to foreign and domestic privately-owned companies, to small U.S.-based ventures. His clients appreciate that he knows the law, inside and out, and is able to deliver timely and understandable answers to even the most complicated questions.
Sincere and thoroughly prepared, Ernie is well-versed not only in the variety of technical and scientific subject matter involved in IP-related matters, but also at converting such complex information into easily-understood straight-talk. Ernie has been involved in the preparation and prosecution of patent applications in technologies including computer programs, database architectures, computer-implemented business methods, digital circuitry and IC manufacturing.
Ernie has also prepared and prosecuted patent applications directed to cloud computing, Web Services protocols (WSDL, UDDI), mobile to desktop synchronization, and video on-demand; for business, directed to financial planning, inventory management, on-line auctions, banking and infrastructure for business-to-business ecommerce; for targeted advertising, directed to query context and disambiguation, clustering and classification, and text and non-text search engines; for network protocols, directed to adapters, access points and switches; for compression, error correction and signal processing; for automated testing of network components and telecommunications; for IC manufacturing, directed to design, processes and instrumentation of manufacturing, and capital equipment for IC production.
Prior to his patent counseling and prosecution practice, Ernie devoted 18 years to trial practice, handling technology disputes involving patents, engineering design, contracts, construction delay and failure, and environmental clean-up, with nine months in-trial time. He also resolved insurance coverage and bad faith, wrongful discharge, and racial discrimination cases. Ernie’s expertise as a trial lawyer has readily translated into the successful representation of clients, particularly before the USPTO. Ernie’s diplomacy and negotiation abilities, combined with trial presentation skills translated into WebEx interviews, have made him exceedingly effective in persuading Patent Examiners.
Ernie regularly speaks at seminars, conferences and meetings. His recent speaking engagements include webinars and NAPP annual meetings, addressing “PTO Examiner Interviewing Techniques and Tips in the Era of Hoteling, WebEx and Videoconferencing.” Over the years, he has acquired reputable praise for his techniques and strategies for examiner and inventor interviews. Ernie also gave annual lectures to foreign officers attending the National Defense University (ISMO program) on the role of patents in capital formation for startups, and for more than a decade of their visits to Silicon and Napa Valleys.
Ernie is a graduate of Stanford Law School and of the University of Michigan, College of Engineering (IE + OR), with Highest Honors, including Tau Beta Pi and Alpha Pi Mu. In 1999, Ernie joined his law school classmate, Mark Haynes, to co-found HBW.
Mark is dedicated to facilitating what his clients want to achieve, and then delivering such results. He is valued for providing legal counsel that helps rather than hinders his clients’ commercial objectives. In addition, Mark is careful with his clients’ budgetary requirements, and strives to deliver ROI based on the consistently high quality of his work and the actual utility of his advice. Mark’s personal stake in serving his client’s best interest is why they seek his continuous advice regarding their ongoing IP initiatives.
Mark holds the highest available peer-review rating at Martindale-Hubbell of AV-Preeminent. He is committed to understanding the often complicated technologies and dynamics of each client. Technical areas of Mark’s practice have included integrated circuits, communications, computer systems, the internet and computer software, medical devices, lasers, optics, radar and integrated circuit manufacturing technology. Whether Mark is advising a large corporation with international IP assets and established policies and procedures, or an emerging company seeking immediate solutions in order to sustain itself and grow, Mark knows from actual experience how to navigate beyond the unique challenges they face.
Mark graduated from Stanford Law School, and holds a B.S.E.E. with Highest Honors from the University of Texas at Austin. He is admitted to practice law in Texas and California, as well as registered to practice before the U.S. Patent and Trademark Office. A founding partner of HBW, Mark previously served as a member of Wilson Sonsini Goodrich & Rosati in Palo Alto, CA, where he was head of the Patent Prosecution Group for computer related technology. Prior to joining Wilson Sonsini, Mark founded and built Haynes & Davis in Menlo Park, CA, specializing in intellectual property and where his entire team would also join Wilson Sonsini as a result of their success. Mark began his legal career in criminal defense litigation involving capital murder trials. In the intellectual property field, he moved to San Francisco to join the IP firm of Fliesler Dubb Meyer & Lovejoy, where he was promoted from Associate to Partner.
In addition to his extensive private practice experience, Mark also worked as a patent attorney at IBM Corporation in Los Gatos, CA, working directly with the Computer Science Department at Almaden Research Center. Having served as an in-house attorney himself, Mark offers an innate understanding of what it means to set objectives within a company and achieve those results.
A charismatic speaker and known thought innovator in IP law, Mark has served as a panelist for the Intellectual Property Section of the State Bar of California on the topic of “Software Patent Practice,” as well as for the Intellectual Property Symposium at UC Berkeley entitled “The Legal and Policy Framework for Global Electronic Commerce: A Progress Report.” Arising from that Symposium, he then authored “Commentary: Black Holes of Innovation in the Software Arts” for the Berkeley Technology Law Journal.
An active participant in the legal community, Mark is a member of the American Bar Association, American Intellectual Property Law Association, San Francisco Intellectual Property Law Association, and the Silicon Valley Intellectual Property Law Association. He also served as a member of the Advisory Board and a former Trustee of Coastside Land Trust.