Jonathan Hicks Email & Phone Number

Silicon Valley

Palo Alto

· Experience in patent litigation and prosecution patents, including post-grant USPTO proceedings.· Lead technical analysis and strategy for invalidity/validity and non-infringement/infringement for multiple matters involving various subject matter such as barcode, mobility, and scan engine decoderes, wireless technologies including Bluetooth, and user interface technologies. · Lead technical analysis including drafting inter partes review petitions and pre- and post-grant institution responses; depose expert witnesses; and argue before PTAB board.· Take and defend dozens of depositions including expert, engineering, and 30(b)(6) depositions. · Draft Markman claim construction briefs and argue at Markman hearing.· Draft patent applications; more than a dozen applications worked on have issued.· Lead pre-litigation due diligence analysis including non-infringement and invalidity strategy; draft work product summarizing analyses and present to client. · Manage junior associates in preparing invalidity/validity and non-infringement/infringement analyses; draft various motions and documents.

Sacramento

· Research and draft motions, including substantive and procedural motions for California state courts, California Eastern District Court, Nevada state courts and Nevada District Court.· Depose percipient witnesses, expert witnesses, custodians of records and parties.· Review and summarize medical records, employment records and billing records.· Research and prepare writs of mandamus for review by Nevada Supreme Court.· Argue substantive and procedural motions at hearings in California and Nevada state courts.· Prepare for and meet with expert witness physicians to discuss standard of care and causation issues.· Research developing case law and present at weekly firm meetings.· Prepared and prevailed on motion in limine resulting in savings of $350,000 to client; prepared motion for summary judgment and obtained dismissal for client.

Santa Clara

· Build application to collect and display historical financial revenue based on a company name selected from a list of companies that is derived from the USPTO patent assignment record.· Generate patent troll list based on court filings, legal articles and patent holding records.· Work under patent professor Colleen Chien from the University of Santa Clara Law School.· Experience and work performed was incorporated into research and scholar articles on developing patent law by professor Collen Chien.

Santa Clara

· Draft computer software and hardware patent applications that were submitted to the USPTO.· Develop and draft strategic arguments to USPTO-issued patent application rejections.· Research developments in patent and copyright law based on recent federal decisions and articles and discuss research during firm-wide meetings.· Obtained notices of allowance for at least three patent applications.

· Direct the application reports team, which was responsible for collecting and analyzing data used in generating reports for four counties in compliance with California welfare regulations.· Organize and lead user design sessions intended to redesign sections of the application.· Control user access to the application and implement customized security software to limit access.· Design, program and test web-based user interfaces using knowledge of Java, JavaScript, HTML, JavaBeans, Siteminder, MySQL and JUnit software tools.· Promoted twice within two years after beginning programmer position.

Doctor Of Law (J.D.), Law

- High Tech Law Journal Associate - Student Intellectual Property Law Association

B.S, Computer Science, Mathematics, Japanese

· Dean's List Award Recipient · Studied abroad at Chukyo University in Nagoya, Japan · Writer at Student Newspaper "Pioneer"