Joseph A. Herndon

Partner
P: 312.913.3331
F: 312.913.0002

Joseph A. Herndon is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm's Software & Business Methods Practice Group. Mr. Herndon has experience in all areas of patent and trademark law practice. Mr. Herndon's prosecution experience includes all phases of U.S. and foreign patent and trademark prosecution, client counseling, due diligence, and opinion work regarding validity, infringement, and enforceability of patents. His litigation experience includes all phases of trial work, from pleadings to verdict.

As part of his patent practice, Mr. Herndon has helped clients establish an internal invention disclosure intake process and patent review board for incentivizing employee submissions of invention disclosures, and for identifying patentable ideas. In this respect, Mr. Herndon has led dozens of invention harvesting sessions with engineers, other inventors, and in-house patent counsel. He also regularly gives presentations on patent law to inform engineers of the patent application process, and to educate and generate interest in patents for engineers to keep in mind during research and development activities.

Mr. Herndon represents Fortune 500 companies that span a diverse range of technologies, and has helped clients pursue patent rights by drafting well over 350 patent applications in a wide variety of electrical and mechanical disciplines. Examples of Mr. Herndon’s technical experience in the computer hardware and software fields relate to telecommunications, mobile Internet platforms and mobile device operating systems, computer networking, computer architecture design, aerospace/automation and control, semiconductors, consumer electronics, robotic controls, geophysical prospecting, Internet gaming, digital map and vehicle navigation, music discovery and content identification, 3D object data modeling, and sensor fusion algorithms.

Examples of Mr. Herndon’s technical experience in the mechanical and materials fields relate to automotive lighting and diagnostics, orthopaedics and medical implants, medical devices, batteries, kinematic robotic designs, and aircraft rotor design and operation.

Mr. Herndon also represents universities and individual inventors with respect to software, business methods, and financial planning activities.

Representative Experience

  • Successfully preparing and prosecuting patent applications for large cellular wireless communications corporation.
  • Handling complex patent prosecution portfolio for large music discovery service provider.
  • Managing patent prosecution portfolio for large consumer robotics developer.
  • Working with surgeons to take innovative prototypes to the market, and advising on intellectual property protection throughout the process.
  • Managing worldwide patent prosecution portfolio for company in software, electronics, and mechanical products.
  • Organizing invention disclosure intake process and patent review board for new company, and meeting with engineers to learn of research and identify patentable ideas.

 

At MBHB, Mr. Herndon has served as the editor-in-chief of MBHB's snippets® newsletter for a number of years, and separately serves on the firm's Patent Prosecution Group Committee.

Mr. Herndon joined MBHB as a technical advisor/patent agent, and prepared and prosecuted patent applications. He attended law school evening classes while maintaining his full-time position at the firm.

Prior to joining MBHB, Mr. Herndon worked for an electric utility provider where he gained expertise in power electronics, energy distribution and planning, and energy systems.

Mr. Herndon is a frequent lecturer and author on intellectual property matters, and has taught classes in intellectual property law at Chicago-Kent College of Law and Northwestern University, as well as participates as a featured presenter for Practising Law Institute (PLI) Patent Prosecution Workshops.

Published Articles

The following publications include links to the Patent Docs weblog, a site focusing on patent law news.

 

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)

Pepys (17th century) recorded his sleep patterns, so wearable devices that record sleep patterns unpatentable? (May 2016)

USPTO Provides Insight on PTAB Amendment Motions (May 2016)

"Quick Look Test" Used by District Court to Support Lack of Preemption and Find Software Claims Patent Eligible (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)

 

Memberships

University of Notre Dame
  • Adjunct Faculty for Patent Law & Prosecution II

IPO Patent Office Practice Committee
  • Member

Professional Engineering
  • Intern License, State of Illinois

Previous Teaching Position

Northwestern University School of Engineering
  • Adjunct Professor, Engineering Law

Past Events

September 12-13, 2017
PLI-Sponsored 2-Day Seminar Features 5 MBHB Partners as Presenters
November 15, 2016
September 14-15, 2016
PLI-Sponsored 2-Day Seminar Features 5 MBHB Partners as Presenters
January 20, 2016
MBHB Partner Joseph Herndon Is the Featured Presenter at this LSI-Sponsored Program
September 10-11, 2015
MBHB Partners Joseph Herndon, Bradley Hulbert, Kevin Noonan, Ph.D., Thomas Wettermann and Donald Zuhn, Jr., Ph.D. are Featured Presenters

Publications

Winter 2017 (snippets)
Although the PTAB has instituted CBM trials for patents that do not facially qualify as business method patents, recent Federal Circuit decisions have required a more strict reading of the AIA statute in instituting CBM trials.
Spring 2016 (snippets)
The “on-sale” bar to patentability refers to a sale or offer for sale of an invention that can invalidate the patent for that invention. The America-Invents-Act (AIA), which altered the language in the statutes that apply to the on-sale bar, has made it difficult to determine what actions might constitute a “sale” or an “offer for sale” under current law. Nevertheless, a clear understanding of the on-sale bar is necessary to enable entities of all sizes—from single inventors to large corporations—to effectively monitor activities surrounding their inventions, and to enable attorneys to provide such entities with accurate and useful advice.
Spring 2015 (snippets)
The recent interpretation of patent eligible subject matter under 35 U.S.C. § 101 by the Supreme Court in Alice v. CLS Bank in June 2014 has caused confusion in the patent world regarding the validity and practicality of software and business method patents. In Alice, the Supreme Court held that claims directed towards a computer-implemented means of mitigating settlement risk by using a third-party intermediary did not qualify as eligible subject matter.
November 17, 2014

Prior to filing a patent application at the United States Patent and Trademark Office (“USPTO”), an applicant seeking patent protection for an invention should consider conducting a prior art search. Also known as a patentability search, a prior art search involves discovering and examining art, such as issued patents, published patent applications, and other published documents, that can affect the potential to obtain a patent on the invention. More exhaustive prior art searches may also include discovering and examining any prior uses or prior sales of technology related to the invention.

Spring 2014 (snippets)
Patent claim drafting is a challenging exercise that requires balancing potential infringement of the claim against the prior art. A patent practitioner may easily draft a claim of very narrow scope, but if such claim has a low likelihood of being infringed, the value of the claim is extremely diminished.
Fall 2013 (snippets)
In Ex parte Mewherter, a recent decision by the Patent Trial and Appeal Board (PTAB) at the United States Patent and Trademark Office (USPTO), the Board handed down a precedential decision regarding the language of computer-readable medium (CRM) claims. Particularly, this decision established that computer readable storage media (CRSM) claims are not patent eligible unless the claims recite the magic term “non-transitory,” or the specification adequately limits the term “storage media” to exclude signals, carrier waves, or other transitory signals. These transitory signals are not patentable subject matter under the Federal Circuit's In re Nuijten decision, because they do not fall into any of the four statutory categories (i.e., process, machine, manufacture, or composition) set forth in 35 U.S.C. § 101.
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