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:
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 & Business Methods 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.
Summa Cum Laude
Electrical Engineering, With Honors
The following publications include links to the Patent Docs weblog, a site focusing on patent law news.
Claims Directed to Television Survive Abstract Idea Challenge (January 2018).
Image Processing Patents Found to be Ineligible for Patenting (November 2017).
Computer Network Patent Claims found Patentable (July 2017).
File-Searching Software Patent Found to be Patent Eligible (February 2017).
Second CBM Petition Denied As “Second Bite at the Apple (December 2016).
Message Exchange Patent Held Invalid under Section 101 (November 2016).
Perdiemco, LLC. v. Industrack LLC (E.D. Tex. 2016) (October 2016).
CBM Patent Review Denied for Claims Lacking Financial Subject Matter (September 2016).
“Computer Display System” Patent Found Invalid under § 101 (September 2016).
IPRs Threatened/Filed as Money-Making Strategy (August 2016).
Appistry, Inc. v. Amazon.com, Inc. (W.D. Wash. 2016) (August 2016).
Mathematical Algorithm Found to be Unpatentable (June 2016).
USPTO Provides Insight on PTAB Amendment Motions (May 2016).
PTAB Not Bound by Prior District Court Ruling on § 101 (April 2016).
U.S. District Court Disagrees with PTAB (April 2016).
Laches Bars Claim to Change Inventorship on Issued U.S. Patent (February 2016).
Producing “digital labels” is Patent Eligible under § 101 (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).
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).
Computer-Readable Medium Claims vs. Printed Matter (November 2015).
PTAB Issues Questionable 101 Decision (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).