Joseph A. Herndon specializes in helping global medical device and diagnostics companies navigate intellectual property challenges throughout their product development lifecycles. Mr. Herndon offers due diligence counsel and writes opinions regarding validity, infringement, and enforceability of patents. His medical device and diagnostics clients seek his counsel as they work to secure IP protection for their innovations.
With more than 20 years of experience in intellectual property law, Mr. Herndon also has experience in all areas of patent and trademark law. He guides clients across industries – from medical devices to software to mechanical engineering – on patent prosecution and patent portfolio strategy. He has also supported clients in all phases of litigation.
Mr. Herndon helps computer hardware and software companies, as well as mechanical and materials companies, prosecute patents and develop IP portfolio strategies to protect their innovations. His technical experience in these fields includes:
- Computer vision and image processing
- Machine learning and artificial intelligence
- Telecommunications
- Mobile Internet platforms and mobile device operating systems
- Computer networking
- Orthopedics and medical implants
As part of his patent practice, Mr. Herndon offers competitive monitoring and analysis to help his clients gain a comprehensive understanding of the intellectual property landscape for their products. He has also helped clients establish internal invention disclosure intake processes and patent review boards for incentivizing employee submissions of invention disclosures and for identifying patentable ideas.
Mr. Herndon is co-Chair of MBHB’s Software & Computing Practice Group and a contributor to Patent Docs, a website featuring news and commentary on patent law.
Outside of work, he enjoys spending time with his family and supporting his children’s many extracurricular activities, including music, gymnastics, and karate.
- Counseled a global medical device company on how to navigate a competitive intellectual property landscape and design around existing patents during the development of new products.
- Helped a global aerospace company build its worldwide patent portfolio by providing patent prosecution support across technology disciplines, including systems engineering, network systems, structures, manufacturing, and environment and safety.
- Managed global patent prosecution portfolio for a software, electronics, and mechanical products company.
- Helped software company triple the size of its IP portfolio through patent acquisition.
- Successfully prepared and prosecuted hundreds of patent applications for large cellular wireless communications corporation.
- Managed complex patent prosecution portfolio for a large music discovery service provider.
- Managed patent prosecution portfolio for a large consumer robotics developer.
- Worked with surgeons to take innovative prototypes to market and advised on intellectual property protection.
- IPO Patent Office Practice Committee
- Member
- Professional Engineering
- Intern License, State of Illinois
- Northwestern University School of Engineering
- Adjunct Professor, Engineering Law
- University of Notre Dame
- Adjunct Faculty for Patent Law & Prosecution II
The following publications include links to the Patent Docs weblog, a site focusing on patent law news.
U.S. Government Fails in Attempt to Invalidate U.S. Patents under § 101 (February 2018).
Claims Directed to Television Survive Abstract Idea Challenge (January 2018).
Image Processing Patents Found to be Ineligible for Patenting (November 2017).
Patents Directed to Mail Barcodes Found to be Directed to Ineligible Subject Matter (October 2017).
Telephone Call Processing Patent Claims Found Invalid under 35 U.S.C. § 101 (October 2017).
Telecommunication Call Processing System Held to Be Eligible for Covered Business Method (CBM) Patent Review (September 2017).
Software Patent: Method for obtaining an automobile insurance claim valuation report held invalid (August 2017).
Interpreting Real-Time Sensory Data from Electrical System Found to Be Abstract Idea and Patent Ineligible (August 2017).
Software Claims found to be too Broad, and thus, too Abstract (July 2017).
Computer Network Patent Claims found Patentable (July 2017).
Claims Directed to Providing Financing for Allowing a Customer to Purchase a Car found Invalid under 35 U.S.C. § 101 (June 2017).
Message Publishing Patents Found Invalid under 35 U.S.C. § 101 (May 2017).
Method for Processing Images from 3D Camera System Found Invalid under 35 U.S.C. § 101 (May 2017).
Acting as Lexicographers Saves Patent from Being Found Invalid (April 2017).
Claims Lacking Details Found to be Directed to Patent-Ineligible Subject Matter (March 2017).
No CBM Review for On-Line Registration Patent Having Financial Applications and Uses (March 2017).
Patent Directed to System for Remote Mirroring of Digital Data Found Invalid under Section 101 (March 2017).
Federal Circuit Finds That USPTO Board Interpreted CBM Statute Too Broadly (February 2017).
Software Patent Directed to Pairing Activity Trackers to a Device Considered Patent-Eligible (February 2017).
Personal Jurisdiction Exists Due to Warning Letters and Prior Litigations in Forum (February 2017).
Business Method / Software Patent Invalidated for Claiming Ineligible Subject Matter (February 2017).
Method for Manufacturing Product (Dental Crown) Found to be Patent Eligible (February 2017).
File-Searching Software Patent Found to be Patent Eligible (February 2017).
USPTO’s Conclusion of Obviousness Rendered Primary Reference Unsatisfactory for Intended Purpose (January 2017).
Computer-Related Data Security Patents Found to Recite Patent Eligible Subject Matter (January 2017).
“Intuitive” to Combine Insufficient to Support Obviousness Rejection (January 2017).
PTAB Follows Strict Application of CBM Statute Following Unwired Planet (December 2016).
Patent Directed to Programmable Ticketing System Determined to be Eligible for Covered Business Method Patent Review (December 2016).
Second CBM Petition Denied As “Second Bite at the Apple (December 2016).
Computerized Restaurant Ordering Menu Patents Found to Be Directed to Unpatentable Subject Matter (December 2016).
Federal Circuit Finds Another Software Patent Invalid under Section 101 (November 2016).
Message Exchange Patent Held Invalid under Section 101 (November 2016).
Location-Based Online Gaming Patents Found to be Directed to Patentable Subject Matter (November 2016).
Perdiemco, LLC. v. Industrack LLC (E.D. Tex. 2016) (October 2016).
Rule-Based Data Processing Patent Held to Be Directed to Patent-Ineligible Subject Matter (October 2016).
Just When You Thought the Federal Circuit Was Softening Restrictions on Software Patents, the Tide Turns Again (October 2016).
CBM Petition Denied for Patent Lacking Financial Product or Financial Activity in the Claims(September 2016).
CBM Patent Review Denied for Claims Lacking Financial Subject Matter (September 2016).
“Computer Display System” Patent Found Invalid under § 101 (September 2016).
Software Patent Found to Be Directed to Abstract Idea, But Survives § 101 Challenge with Inventive Concept (September 2016).
Eastern District of Texas and PTAB Issue Conflicting Decisions on Same Patent (August 2016).
Sally Beauty Holdings, Inc. v. Intellectual Ventures I LLC (PTAB 2016) (August 2016).
IPRs Threatened/Filed as Money-Making Strategy (August 2016).
Appistry, Inc. v. Amazon.com, Inc. (W.D. Wash. 2016) (August 2016).
Life Technologies Corporation v. Unisone Strategic IP, Inc. (PTAB 2016) (July 2016).
Claims of Another “Loan Application” Patent Invalidated under Section 101 (July 2016).
Business Method Patent Not Invalid under 35 U.S.C. § 101 (July 2016).
Mathematical Algorithm Found to be Unpatentable (June 2016).
Federal Circuit Concurrence — Decide Patentability with Patent-Eligibility (June 2016).
Patent Having Claims That Apply Law of Nature Is Patent-Eligible (June 2016).
Electronic Delivery of Messages Equated to U.S. Post Office Services (June 2016).
Patent Directed to Geographic Parcel Boundary Maps (for Tax Purposes) Not a Covered Business Method (June 2016).
Directory Assistance Call Completion Is Not A Financial Service for CBM Purposes (May 2016).
USPTO Provides Insight on PTAB Amendment Motions (May 2016).
Focusing on the Claims, the PTAB Denies CBM Review of a Market Research Patent (April 2016).
PTAB Not Bound by Prior District Court Ruling on § 101 (April 2016).
U.S. District Court Disagrees with PTAB (April 2016).
U.S. Patent to Consumer Marketing, Based on Avatar Choices, Survives § 101 Challenge (April 2016).
After Multiple CBM Petitions, Motorola Invalidates Software Patent (March 2016).
U.S. Patent to Database for Protecting Formula for Coca-Cola Found Invalid under CBM Review(March 2016).
PTAB Ignores District Court Claim Construction, Finds Patent Invalid (March 2016).
Typical “Business Method Patent” Struck Down by PTAB using CBM Review (March 2016).
Laches Bars Claim to Change Inventorship on Issued U.S. Patent (February 2016).
Producing “digital labels” is Patent Eligible under § 101 (February 2016).
Despite Amendments during Reexamination, Intervening Rights Not Found (February 2016).
Driessen v. Sony Music Entertainment (Fed. Cir. 2016) (February 2016).
Avid Technology, Inc. v. Harmonic, Inc. (Fed. Cir. 2016) (February 2016).
Motivation Innovations, LLC v. Petsmart, Inc. (D. Del. 2016) (February 2016).
NRT Technology Corp. v. Everi Payments, Inc. (PTAB 2016) (February 2016).
Mortgage Grader, Inc. v. First Choice Loan Services Inc. (Fed. Cir. 2016) (January 2016).
Genband US LLC v. Metaswitch Networks Corp. (E.D. Tex. 2016) (January 2016).
Patent Eligibility Requires Consideration of the Claim as a Whole (December 2015).
Patent Claims and Specification Lacking in Detail Fail under 35 U.S.C. § 101 (December 2015).
Claim Drafting Strategies — Functional Claiming and Reciting User-Action (December 2015).
“Software” Claims Reciting No Structural Components Invalid under § 101 (November 2015).
Computer-Readable Medium Claims vs. Printed Matter (November 2015).
PTAB Issues Questionable 101 Decision (October 2015).
Swearing Behind Reference Still Requires Proof of (Timely Filed) Evidence (October 2015).
Be Wary of Claim Amendments During Reexamination (September 2015).
Broad Claims and Inadequate Support in Spec Render Patent Invalid (September 2015).
Claim Terms Not Limited to Specific Embodiment (August 2015).
Standard Essential Patents Unenforceable on Theory of Indirect Infringement (August 2015).
