Intellectual Property Expert

As an “Intellectual Property Expert,”(CV as Expert Witness) I assist companies monetize and defend their intellectual property.  Intellectual Property is understood as patents, technologies and inventions at different stages:

  • Startups – Technology Incubation or acceleration, IP protection, Prototyping,   via my incubator and accelerator: the EGLAVATOR
  • Strategic Assessment and Assistance of your IP Litigation as an Expert Witness Testimony for IPRs or Patent Litigations 
  • Strategic consulting for Patent Licensing and Monetization negotiations with potential licensees (IP Licensing)

Who is Dr. Hernandez?

Dr. Edwin Hernandez is a serial entrepreneur, inventor, and founder of “EGLA CORP.” EGLA is a tech powerhouse that create its own technology and where other innovators come to create ventures at the “EGLAVATOR.” The EGLAVATOR is Dr. Hernandez technology incubator and accelerator located in Boca Raton, FL.  The EGLAVATOR assists and invest in over 12 startups including advising efforts for funding, intellectual property, and tech strategy. As part of this intellectual property expertise, Dr. Hernandez has licensed his wireless portfolio to Verizon Wireless and other high-tech giants.  Dr. Hernandez is an expert in technology, venture funding, strategy and has many years of experience in wireless communications, AI, cloud computing, IOT, electronic devices, and other advanced software platforms. He is hand-on coder and creates prototypes for many of the products created at his incubator, hence is quite familiar with code reviews, hardware, and software audits.  Dr. Hernandez earned a B.S. in Electronics engineering from Costa Rica Institute of Technology, and a M.S in ECE and PhD in Computer Engineering from the University of Florida.  Dr. Edwin is an inventor to 14 issued US Patents and has provided technical expert witness services in over 30+ intellectual property cases including 6 IPRs, and one trial testimony. As part of his daily life, Dr. Hernandez works on its own projects and provides technical and startup strategy advice to several high-tech startups in the areas of AI, media streaming, blockchain, NFTs, AR/VR, and health tech.  Dr, Hernandez was a Fulbright scholar and has been a judge for the Mobile World Congress several times. Dr. Hernandez is also Microsoft and Motorola alumni, a member of the Industry Advisory Board (IAB) at Florida Atlantic University, and a producer of his own podcast, TECHEDTV.

The Incubator – EGLAVATOR

Many technologies require more than just filing for a patent, in many cases pivoting, testing products with customers, and validation is required as part of an “incubation process”.  An incubation phase is then, a must to have, for any “Intellectual Property” asset to become valuable. I can assist you with the financial projection, market value, and technology strategy for your business. 

 

Patent Brokerage and Technology Licensing

I help companies licensing or selling intellectual property (IP)  for assistance contact me directly for more details.   Licensing must be done with careful attention to details, specially technical specifications, distinction of trade secrets over patents, and value your IP appropriately.

 

Expert Witness – Strategy, Technology Audits and Litigation  Consulting 

Dr. Hernandez is an independent Expert Witness with technical and damages reports surviving Daubert challenges in Federal court. 

I have also worked with Expert Witness brokers and nominated as an IMS EliteXpert. I have also worked for other organizations like ATS Experts, AP Experts, Thomspson Reutes,  but  prefer to be can be contacted directly to sales@eglacorp.com or if you would like to know more find out at  Dr Edwin as an Expert Witness

As an intellectual property expert, Dr. Edwin has worked in many patent/trade secret cases in technology and software, Wireless, Telecommunications, 4G/LTE, Cloud-based Systems, Augmented Reality, TCPA, Bluetooth, and all my areas of expertise.

Code Review under Clean room conditions or claim chart analysis 

As intellectual property expert,  I can conduct software audits and clean room analysis of your code, any software that is being acquired, pre-litigation support, and claim chart analysis. 

I completed an audit in 2018 to SINAP and the government of Honduras. SINAP is the “National Property Institute of Honduras.”  Their software included millions of lines of code, Tera Bytes of geospatial information and databases, Java code, .NET, HTML/CSS, and many processes to handle thousand and thousands of property titles and property information in digital formats for the entire country of Honduras. The audit was a success and we expect to help more on that front.

For more sample reports, on IPR or other public matter refer to:

Technical Expert Witness for Intellectual Property and Patent Cases

1.	University of Florida Research Foundation, Inc. et. al. v. Motorola Mobility LLC. Filed in U.S. District Court for the Southern District of Florida 
Attorney Firm:  Meltzer Law and Lundwall Law 
Case: Patent Litigation Matter – Wireless Communications and Emulation
Case settled in 2014 (Deposed)

2.	Virtela Technology Services v. Andrew Funk, File in the US District Court of Denver, Colorado, 
Expert Witness for Andrew Funk.
Attorney Firm: Dorsey Law
Case:  Trade Secret Theft – Cloud Computing
Case Settled in 2016.

3.	Del Castillo v. Bank of America – Expert Witness for Bank of America – Florida Southern District
Attorney Firm: Liebler Gonzalez & Portuondo PA
Case:  Online Reputation and Web search  
Case settled 2017

4.	Google v Seven Networks vs -   Expert Witness for Seven Networks – E.D. of Texas
Case: Patent Litigation 
Attorney firm: Thompson and Knight LLP
Case settled 2017.

5.	Blue Radios v. Kopin - Expert Witness for Blue Radios– Colorado  - 
Attorney Firm: Sheridan Ross 
Case:  Patent Litigation,  Code Review, Trade Secret Theft Matter in Wearables, Bluetooth, User Interfaces
Ongoing (Deposed)

6.	Mobility Workx v. T-Mobile – Case Settled – 2017
Case: Patent Litigation – Wireless Handover 4G Protocols and Simulation
Attorney Firm: Machat Law and Others  (Deposed, Expert Declaration)
Case settled 2017

7.	Mobility Workx v. Verizon Wireless, Damages Expert Witness for Mobility Workx, LLC in E.D. Texas 
Case: Patent Litigation and Damages Expert Royalty Calculation
Attorney Firm: Machat Law and HDMN Law
Case Settled 2021 (Deposed , Expert Report on Damages)

8.	Mobile Manufacturer v. Carrier, Eastern District of Texas, Expert Witness for Mobile Manufacturer 
Case: Paten Litigation – Wireless Protocols, Tunnels, and Signals.
Attorney Firm:  Fish and Richardson
Case Settled 2017

9.	Talent Mobile Development v. Headios Group - California Federal Court
Case: Trademark, Mobile Software, iOS and Android Applications
Attorney Firm: Machat Law
Jury trial testimonial with 700k award (Trial Testimony)

10.	Key West Golf Club v. Cable Provider – Cable TV distribution technologies – Preliminary study – Key West, FL, 2019
11.	Express Mobile v. DreamHost, LLC – Expert Witness – US District Court of Delaware – 2019
Case: Patent Infringement – eCommerce Platforms, Javascript, 
Attorney Firm: Devlin Law
Expert Reports – Case settled. 

12.	Stone v. AT&T, Vehicle –  US District of San Diego,
Case: TCPA Matter - Expert Witness for AT&T, MMS Messaging 
Attorney Firm: Hill, Kertscher And Wharton, LLP
Case settled in 2019 (Deposed, Settled)

13.	XCommerce v. Express Mobile, Express Mobile vs. BigCommerce, E.D District of Texas and California Northern District
Case: Patent Infringement – Virtual Machines, e-Commerce Platforms, PHP/JavaScript
Attorney Firm: Devlin Law
Expert Witness for Express Mobile.  Review code for client, claim charts, code reviews, invalidity defenses, (Deposed, Trial Scheduled and Pending) 

14.	Workspot v. Citrix – Expert Witness IPR2019-01002-
Case: Patent Trial and Appeals Board 
Attorney Firm: DLA Piper
Expert Witness for CITRIX  - PTAB, 2019 - (Deposed, Instituted but all claims held patentable

15.	DISH Network LLC v. Multimedia Content Management LLC - IPR2019-01014 and IPR2019-01015, Expert Witness for Multimedia Content Management, LLC, 2019 
Case: Patent Trial and Appeals Board
Attorney Firm: Toler Law Group, PC
IPR Not instituted in both cases.

16.	TPI vs Keller Williams, Inc –Texas Western District 
Case: Damages and Technical Expert Witness,  Trade secrets, software.
Attorney Firm:  White & Case LLP
Settled  2020 (Deposed, Settled)

17.	Bell Northern Research, LLC v. LG Electronics, Inc., et al, California Southern District
Attorney Firm: Skiermont Derby LLP
Case: Patent Infringement & Validity Federal Case. Code Review, Expert Witness Declaration and IPRs (3) – Beamforming and Wireless Technologies
Settled, Terminated Institution

18.	Bell Northern Research, LLC v. Samsung et al,  E.D. of Texas.
Attorney Firm: Skiermont Derby, LLP 
Case: Infringement & Validity Federal Court, IPRs (3), California, Code Reviews Assisting infringements reports & damages models, Technical Expert Reports 
Case Settled, 2 IPRs not instituted

19.	TCL -  assistance & consulting for several patents and IP cases - Taiwan 

20.	Barkan v. Sprint – E.D. of Texas, 
Attorney Firm: Susman Godfrey, LLP 
Case: Technical Expert Reports, Code Reviews, 4G, PicoCells, Tunnels, Invalidity and Infringement Reports, 
Deposed (Case Settled)

21.	Kaiffi v. T-Mobile, Verizon  - E.D. of Texas, Technical Expert Reports  (Streaming and wireless) (Withdrawn by Client)

22.	Flexiworld v. Amazon, others, Texas Western District, Technical Expert Reports  (Streaming Technologies)  (Withdrawn)

23.	Contour Data Solutions v. Gridforce, CDW – Pennsylvania E.D., 
Case Technical Expert Reports (Data Center, Cloud and Virtual Machines, Trade Secrets)
Attorney Firm: Vedder Price
Deposed and Expert Report Files (ongoing)

24.	Mediatek, et. al v. Nippon Telegraph, Nippon Telegraph vs. Media Tek, E.D of Texas -  IPR2020-01607, Declaration and Reports, IPR and US District court 
Attorney Firm: Dickinson & Wright
Case: Wireless Modulation, RF, OFDM, other wireless comm issues, 
Deposed IPR, Validity and Infringement, VHDL Code Reviews - Settled

25.	Netapp v. Proven Networks, PTAB Case: IPR2020-01436, Declaration and Reports, and Proven Networks vs. Netapp Federal Circuit Case, Texas Western District
Attorney Firm: Russ August & Kabat
Network Storage, Protocols, Caching devices. Code Reviews, Infringement, Validity, Deposed for IPR, Infringement, and Validity. (Ongoing)

26.	BNR (Mobile / Wireless Patents) v. Several Defendants (NOKIA, BLU, Samsung, TCL) – International Trade Commission Case No. 337-TA-3568
Case:  Patent Infringement, Mobile Devices, Code Review, Evidence of Use, Certain Electronic Devices Having Wireless Communication Capabilities and Components, Mobility Patents, WIFI
Attorney Firm: Devlin Law 
Case settled. 

27.	L2MT v. Google – Moved from Texas Western District to the Northern District of California, 
Case: Patent Infringement for 3G Protocols, Claim Construction Assistance 
Attorney Firm:  Fitch Even Tabin & Flannery LLP
Case dismissed 2022

28.	Gravel Inc v.  T-Mobile, Bazaar Technologies, Target and other defendants – E.D. of Texas 
Case:  Patent Infringement, Code Reviews, 101 issues, claim construction. Expert Reports
Attorney Firm: Devlin Law 
Some cases settled, Bazaar Inc still ongoing
Reports, Code Reviews e-Commerce Platform, Code Reviews. Server Graddle PHP, Java server

29.	Intellectual Ventures v. Toyota Motor Corporation, Others – E.D. of Texas
Case: Patent Infringement 
Attorney Firm: Finnegan Henderson Farabow Garrett & Dunner LLP
Ongoing 

30.	BNR Mobile vs defendants – E.D. of Texas, 
Case: Patent Infringement 
Attorney Firm: Devlin Law 
Ongoing

31.	Charles Smith Enterprises, LLC v. Catapult Sports Inc  - District Court of Delaware, 
Case: Patent Infringement
Attorney Firm: Devlin Law
Ongoing.

32.	Advising - Pre-trial / 4 Confidential Defendants/Plaintiffs (2013-2014

Damages Expert Witness for Intellectual Property and Patent Cases

  1. Mobility Workx CellCo Partnership (Verizon Wireless), Representing Mobility Workx, LLC in E.D. Texas, Daubert challenged, scheduled to testify in court for reasonable Royalty.
  2. TPI vs Keller Williams, Damages Report on Trade Secrets, Reasonable royalties

IPR Cases (Inter Parties Review)

  • Workspot vs Citrix– Expert Witness IPR2019-01002-– Expert Witness for CITRIX  – PTAB, (All claims held patentable) PTAB judges agreed with my analysis. 
  • DISH Network LLC vs Multimedia Content Management LLC– IPR2019-01014 and IPR2019-01015, Expert Witness for Multimedia Content Management, LLC (Denied, Not Instituted)
  • LG Electronics v. BNR – Expert Witness for BNR – IPR2020-00108 for U.S. Patent No. 8,416,862 (Terminated, Settlement)
  • SAMSUNG v. BNR – Expert Witness for BNR – IPR2020-00611 (Denied) and IPR2020-00613 (Not Instituted) for U.S. Patent No. 8,416,862 – Settled (e.g. https://ptab.uspto.gov/036e63b4-9123-465b-b453-c3aa3c2ea4e)
  • Mediatek v. Nippon Telegraph, Inc – Expert witness for Nippon Telegraph  IPR2020-01607, (Instituted, ongoing)
  • Netapp v. Proven Networks, Inc – Expert Witness for Proven Networks, IPR2020-01436 (Instituted, ongoing).  

Software Audits & Code Inspections

  • Clean room and code review for Patent and litigation purposes. 
    • C/C++ software
    • Java/Graddle
    • PHP
    • Javascript with multiple libraries (Client, Server-NodeJS)
    • BASH
    • Python
    • MySQL and NoSQL
    • VHDL
    • .NET Platforms
    • Cisco Routers
    • Virtual Machines
  • Honduran Government, “National Institute of Properties,” Multi-million dollar platform transferred from the World Bank to the Honduran Government – Code Review for Java, .NET, and Cybersecurity.
  • Auditing of Honduran Elections, Foresnsics and fraud detection and analysis (Pro-Bono)

Call me at:

561 306 4996

Go to https://eglacorp.com/

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