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OVERVIEW

Daniel A. Valenzuela
Associate

Dallas

2121 N. Pearl Street
Suite 700
Dallas, TX 75201

P 214-258-4150

F 214-258-4199

OVERVIEW

Daniel A. Valenzuela
Associate

Dallas

2121 N. Pearl Street
Suite 700
Dallas, TX 75201

P 214-258-4150

F 214-258-4199

Daniel Valenzuela is an associate in the Intellectual Property Department of Barnes & Thornburg's Dallas office. As a registered patent attorney, Daniel focuses his practice on virtually all phases of complex patent litigation. This includes pre-suit investigation, drafting and responding to complaints, temporary restraining orders and preliminary injunctions, motion practice, hearings, offensive and defensive discovery, invalidity contentions, claim construction, depositions, mediations, trials, appeals, and inter partes reviews (IPRs).

OVERVIEW

Daniel Valenzuela is an associate in the Intellectual Property Department of Barnes & Thornburg's Dallas office. As a registered patent attorney, Daniel focuses his practice on virtually all phases of complex patent litigation. This includes pre-suit investigation, drafting and responding to complaints, temporary restraining orders and preliminary injunctions, motion practice, hearings, offensive and defensive discovery, invalidity contentions, claim construction, depositions, mediations, trials, appeals, and inter partes reviews (IPRs).

He represents clients who work with a wide range of technologies and in various fields, including location tracking systems, internet business methods, two-way radio communications over the internet, personalized marketing technology, navigation and mapping systems, gaming technology, optical switches, plant patents, solar-powered and color-changing lighting products, low profile LED light fixtures, aircraft maintenance systems, and telecommunications.

Daniel has assisted clients with overcoming U.S. Patent and Trademark Office rejections and helping them obtain patents and trademarks. Specifically, he has handled patent prosecution issues for smart card technology involving biometric authentication and other security features to prevent identity theft. He also has analyzed multiple patents relating to computer software and hardware for licenses and provided strategic direction on the protection of intellectual property for soft-drink bottling technology.

Further, Daniel served as the law clerk and staff attorney to Judge Mike Herrera of the 383rd District Court in El Paso County, Texas. He conducted extensive research and analysis, and provided recommendations on complex legal and procedural matters.

Active in the community, he has delivered IP presentations and led panel discussions for college students admitted to law schools.

He earned a J.D. from the University of North Dakota School of Law, where he was a member of the North Dakota Law Review. He also spent his entire second year of law school at the University of Texas School of Law as a visiting student concentrating in intellectual property. Prior to law school, he earned a B.S. in Electrical Engineering from the University of Texas at El Paso and facilitated in designing a million-dollar project known as the Synchronous Optical Network (SONET) for the Texas Department of Transportation (TxDot) in El Paso, Texas.

Professional and Community Involvement

Member, Intellectual Property Section of the Dallas Bar Association

Member, Dallas Hispanic Bar Association

Honors

Texas Super Lawyers, Rising Star, 2014, 2015, 2018, 2019
EXPERIENCE
EXPERIENCE
  • Lighting Science Group Corp. v. Shenzhen Jiawei Photovoltaic Lighting Co. Ltd. and Jiawei Technology (USA) Limited, (N.D. Cal. 2017): Defending Jiawei in a multi-patent lawsuit and IPR involving low profile LED light fixtures. Case is stayed pending IPR.
  • University of Florida Board of Trustees, An Agency of the State of Florida, and Florida Foundation Seed Producers, Inc., a Not-For-Profit Corporation Chartered by the State of Florida v. Hartmann’s Plant Company, (N.D. Florida [Gainesville Division] 2016): Represented the University of Florida and Florida Foundation in a multiple patent case involving blueberry plants. Part of a team to obtain a consent judgment of permanent injunction, willful infringement, and enhanced damages on behalf of the University of Florida.
  • RFJ Licensing, LLC v. Tait Radio, Inc., (N.D. Texas [Dallas Division] 2016): Defended Tait Radio in a patent case involving two-way radio communications over the Internet. Case dismissed with the plaintiff taking nothing.
  • CallWave Communications, LLC v. AT&T Mobility LLC, et al. (Delaware [Wilmington Div.] 2012): Defended AT&T in a patent case involving location tracking technology. Case settled more than a month later after the Delaware District Court stayed the case pending IPR.
  • Simon Nicholas Richmond v. Jiawei Technology (HK) Ltd. et al (3:13-cv-01953 (D.N.J. 2013): Defending 18 manufacturers and retailers in a multiple-patent dispute relating to solar-powered, color-changing outdoor lighting products and certain packaging features relating to similar technology. The actions are consolidated under 3:13-cv-01944. Certain defendants filed IPRs and Reexaminations on some of the asserted patents. The cases remain stayed after the Patent Trial and Appeal Board found all instituted claims invalid. IPR decisions were upheld under appeal before the Federal Circuit. Following briefing on one IPR decision, the U.S. Supreme Court denied the patent owner’s writ of certiorari.
  • Simon Nicholas Richmond v. Forever Gifts et al. (N.D. Texas [Dallas Div.] 2014): Defended Forever Gifts and Walgreens in a patent case relating to solar-powered outdoor lighting products. The case settled after claim construction.
  • Property Disclosure Technologies LLC v. BRER Affiliates LLC (E.D. Texas [Tyler Div.] 2014): Defended BRER in a three-patent case relating to software that generates real estate disclosure forms with a variety of conditions about certain property. Case settled after the briefing of a motion to dismiss for failure to comply with 35 U.S.C. § 101.
  • Innovative Display Technologies LLC, v. Best Buy Co., Inc. et al. (E.D. Texas [Marshall Div.] 2014): Defended Best Buy entities in a multiple patent case involving LED fabrication technology. The case settled shortly after filing as part of a larger global settlement involving the patents.
  • Phoenix Licensing, LLC et al. v. American Express, et al. (E.D. Texas [Marshall Div.] 2014): Defended American Express in a multiple-patent litigation case involving business methods used for personalized communication and marketing. The case settled after claim construction.
  • Flywheel Fitness, LLC v. Flywheel Sports, Inc. (E.D. Texas [Sherman Div.] 2013): Part of a team to defend Flywheel Sports, which removed a state trademark case to federal court, dissolved a temporary restraining order and obtained a judgment denying the plaintiff's motion for preliminary injunction. The case settled thereafter.
  • Peschke Map Technologies LLC v. The Irvine Company LLC, et al. (D. Del. 2012): Defended Irvine Company in a patent infringement case relating to navigation and mapping technology.
  • PT Diagnostics, LLC v Boeing, et al. (E.D. Texas [Marshall Div.] 2012): Represented PT Diagnostics in a multiple-patent case involving aircraft maintenance systems.
  • Beneficial Innovations, Inc. v Advance Publications, Inc., et al. (E.D. Texas [Marshall Div.] 2011): Defended Village Voice Media Holdings in a multiple-patent case relating to network systems and advertising technology.
  • Reshare Commerce, LLC, et al. v.The Antioch Co. d/b/a Creative Memories, et al. (D. Minn. 2011): Defended Dermalogica, Inc. in a patent litigation suit relating to a sales payments management system and method. The case settled favorably after claim construction.

*These representations occurred prior to joining Barnes & Thornburg, but a few active matters were transferred to Barnes &Thornburg.

INSIGHTS & EVENTS
PRESENTATIONS AND PUBLICATIONS
  • Co-Author, "Weighing up IPRs," Intellectual Property Magazine, September 2018
  • Co-presenter, “Protecting IP Rights and Avoiding an Invalid Patent in the Future,” Barnes & Thornburg LLP Intellectual Property Conference in Indianapolis, Indiana, November 8, 2018.
  • Lead Presenter, “Best Practices in Battling the New IPR Trolls: What Patent Owners and Businesses Need to Know and Do?” The Knowledge Group, Live Webcast, April 12, 2017.
  • Co-presenter, “The Anatomy of a Patent Case,” internal monthly litigation meeting, Dallas, August 4, 2016.
  • Co-presenter, “Overview of Intellectual Property Law,” Dallas Bar Association's Lawyers in the Classroom, Career Week at William Lipscomb Elementary School, Dallas, November 20, 2015.
  • Author, “Can an Inventor Continue Protecting an Expired Patented Product via Trade Dress Protection?,” 81 North Dakota Law Review 145, 2005.

*The majority of these occurred prior to joining Barnes & Thornburg.

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