Gary J. Edwards is a partner in Haynes and Boone's Intellectual Property Practice Group in San Jose. He has extensive experience in patent, patent litigation, patent prosecution, and IP licensing. He has represented clients in various matters related to development, enforcement, defense, and monetization matters. Dr. Edwards works with high technology companies to protect their technology, build intellectual property portfolios, assert those portfolios, and defend against the assertions of competitors. He has a strong background in Physics and Materials Science. His analytical abilities and technical skills enable him to assist clients in a wide range of technical areas.
Dr. Edwards has broad experience in protecting diverse technologies. His experience covers a range of technological areas that includes optical devices, optical materials (including nonlinear materials, and LEDs), semiconductor processing, semiconductor processing equipment (e-beam, lithography, surface inspection, materials deposition, etching), semiconductor devices, energy storage technologies including solid-state batteries, alternative energy systems (e.g., solar, wind, and tidal), telecommunications (e.g., high-speed LAN, DSL, wireless, and modem technologies), nanotechnologies (e.g., MEMS, superconducting devices, and materials structures), electronic circuits, imaging technologies, remote sensing devices, and information technologies (e.g., software and networking). Dr. Edwards’ broad technological background lends itself to complex technologies, novel materials structures, and cross-disciplinary technologies.
Representative Experience:
- Developed the international patent portfolios for several companies ranging in size from small start-up companies to large multinational corporations.
- Handled multiple licensing negotiations and dispute settlement negotiations involving the enforcement of IP rights.
- Represented a telecommunications company in negotiations with a licensee involving breach of contract.
- Represented a semiconductor processing company in an IP ownership dispute under a joint development agreement.
- Represented multinational companies in licensing negotiations involving large patent portfolios.
- Participated on several litigation teams to defend or assert patent portfolios.
- Represented a multinational semiconductor company in settling a patent litigation filed in the Eastern District of Texas.
- Represented multinational semiconductor companies in a multijurisdictional litigation, including the ITC, involving large numbers of patents.
Representative Presentations and Publications:
Coauthor, "Patent Standards and Investment In Alternative Energy," IP Law360, Feb. 1, 2008.
Coauthor, "Might No One Have Standing to Bring Suit?" IP Law360, Nov. 6, 2007.
Co-Panelist. Advanced Patent Law Institute, “Due Diligence in IP Transactions," December 11, 2008.
Co-Presenter. Annual All-Hands Meeting, “Strategic Patent Portfolio Management,” December 4, 2008.
Presenter. “The Patent Component of Product Clearance,” in forum “Heading to Market? The IP Component of Product Clearance,” March 26, 2008.
Co-Panelist. Advanced Patent Law Institute, “Developments in Patent Law,” November, 2007.
Co-Presenter. “Trends in Patent Law 2007: What’s Influencing Your Practice?” entitled “The Supreme Court and IP Law: The Impact of Recent Rulings,” May 2, 2007.
Presenter. Silicon Valley Chapter of IEEE, “An IP Roadmap -- Protecting Your IP,” March 27, 2007.
Co-Presenter. UC Berkeley Center for Research on Chinese & American Strategic Cooperation, “Strategic IP Management,” October 24, 2006.
Presenter. American Chemical Society meeting, “Identifying Inventions -- Your Own and Those of Others,” which was part of a workshop entitled “Best Practices of Identifying, Protection, and Managing Your IP Portfolio,” September
13, 2006.
Co-Authored 28 publications for refereed journals and 21 presentations at professional meetings in the area of point defects in single crystal insulating materials.
Selected Representative Experience