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,. trade secrets, etc.
Recently, in Denver’s federal court, my client Blue Radios received a $24.8M award at a patent/trade secret litigation that I provided my expert testimony at trial – Source: Nasdaq. I was also part of the team assisting McKool Smith in the $192M win against Samsung on wireless charging technologies.
My expertise is valuable at all stages of your ventures:
- 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)
My updated CV is at CV – October 2024
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 or invests in over a dozen of startups including advising in funding, go to market strategies, intellectual property, and tech strategy. As part of his 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 and venture funding with 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 16 issued US Patents and has provided technical expert witness services in over 30+ intellectual property cases including 10 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.
Assistant and negotiation of term sheets for software, technology, clean room exchanges with buyers and licensors.
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 Reviews under Clean room conditions or claim chart analysis for licensing, Evidence of Use (EOU) and, Freedom to Operate (FTO)
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 | KOM, Inc vs. Netapp – Expert Witness for KOM, Code Reviews, Expert ReportsAttorney Firm: Dinovo & PriceCase: Patent Case – Storage Computing & ComplianceTechnology: Cloud storage, operating system driven access, WORMSettled | |
2 | BMG Music vs. Altice Inc. – Expert Witness for BMG Music Attorney Firm: StepToe Technology: Firewalls, traffic analysis, detection methods. Case: Copyright infringement – Technology NegligenceQ3’2023 – Settled | |
3 | Cisco Systems vs. Corrigent Networks – IPR2023-00169 – Assisting Corrigent Networks Attorney Firm: Step Toe, Kramer Alberti Lim & Tonkovich LLP Technology: Internet networking and Packet-based systems with cost routing Case: Reexamination, IPR – Networking and Switching technologies Q4’2023 – Final Decision. | |
4 | ConnectQuest v. Oura – Assisting ConnectQuest Case: Patent Infringement – USDC USC 101 Declaration Technology: Connected and Wearable devices, Bluetooth, othersQ4’2023 – Settled | |
5 | Mojo Mobility v. Samsung, USDC Eastern District of Texas Case: IPR, Patent Infringement – Wireless Charging Technologies and Charging Protocols. Technology: Wireless Charging for wearable devices, phones tablets, and pens. Attorney Firm: McKool Smith Mid-2023 – Technical Advise – Involvement Completed | |
6 | Virtela Technology Services v. Andrew Funk, USDC District of Colorado, Expert Witness for Andrew Funk. Attorney Firm: Dorsey Law Technology: Cloud computing, Synchronization Case: Trade Secret Theft – Cloud Computing Mid 2015 – Case Settled 2016. | |
7 | Del Castillo v. Bank of America, USDC Southern District Florida Expert Witness for Bank of America Attorney Firm: Liebler Gonzalez & Portuondo PA Technology: Social media propagation and cleanup of news. Case: Online Reputation and Web search Q1’2017 – Case settled 2017 | |
8 | BNR Mobile v. Several defendants (HMD, others), USDC Eastern District of Texas Case: Patent Infringement Technology: Beamforming, Mobile Services for Authentication, Mobile and Remote Control of devices, Integrated Circuits and Packaging. Attorney Firm: Devlin Law Q1’2020 – Settled and Completed Engagement | |
9 | BNR v. Several Defendants (NOKIA, BLU, Samsung, TCL, AsusTeck) – International Trade Commission Case No. 337-TA-3568 and 337-TA-1367 Case: Patent Infringement, Mobile Devices, Code Review, Evidence of Use, Certain Electronic Devices Having Wireless Communication Capabilities and Components, Mobility Patents, WIFI Technology: Beamforming, Mobile Services for Authentication, Mobile and Remote Control of devices, Integrated Circuits and Packaging. Attorney Firm: Devlin Law Q1’2020 – Case settled. | |
10 | LG Electronics v. BNR – Expert Witness for BNR – IPR2020-00108 for U.S. Patent No. 8,416,862 (Terminated, Settlement During 2020 | |
11 | SAMSUNG v. BNR – Expert Witness for BNR – IPR2020-00611 (Denied) and IPR2020-00613 (Not Instituted) for U.S. Patent No. 8,416,862 Case settled around 2020 | |
12 | Charles Smith Enterprises, LLC v. Catapult Sports Inc, USDC District of Delaware, Case: Patent Infringement (Claim Construction Matters) Technology: Video encoding and processing using editing software. A ttorney Firm: Devlin Law Q4’2022- Ongoing – Re-Exam continues in 2024 | |
13 | 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 in 2017-2018Technology: Oracle Databases, Java-based Platform Code Review, Clean Room, Security, Storage, Data Center. | |
14 | Auditing of Honduran Elections, Forensics and fraud detection and analysis (Pro-Bono) in 2018 | |
15 | Auditing of Honduran Elections, Forensics and fraud detection and analysis (Pro-Bono) in 2021 Technology: Cryptography, Image Processing, and data analytics for fraud detection. | |
16 | Intellectual Ventures v. Toyota Motor Corporation, GM, Volvo, others. USDC Eastern District of Texas (Some Settled, Trial Schedule October 2024 for LG) Case: Patent Infringement Technology: Media Networks in Vehicles, Telematics, Video Sensors, Video encoding, Car Networks, and protocols. CAN, MOST, Ethernet, VCUs, etc. Attorney Firm: Kasowitz Benson Torres LLP All matters Settled, some ongoing. Q1’2022 – Present | |
17 | Key West Golf Club v. Cable Provider – Cable TV distribution technologies – Preliminary study – Key West, FL, Q1’ 2019 Technology: DOCSIS 1.0 and 2.0 systems, measuring SNR to determine quality. | |
18 | L2MT v. Google, OnePlus, TCL and other defendants, USDC Northern District of California, Case: Patent Infringement for 3G Protocols, Claim Construction Assistance Attorney Firm: Fitch Even Tabin & Flannery LLPCase dismissed for Google around 202One Plus – Settled in 2024TCL – Settled in 2024 | |
19 | Mobile Manufacturer v. Carrier, USDC Eastern District of Texas, Expert Witness for Mobile Manufacturer Case: Patent Litigation – Wireless Protocols, Tunnels, and Signals. Attorney Firm: Fish and RichardsonQ1’2017 – Case settled 2017 | |
20 | 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 Technology: Hardware design and implementation, Multimedia Encoding. Attorney Firm: Toler Law Group, PCIPR Not instituted in both cases. | |
21 | Bandspeed v. RealTek Semiconductor Corporation, USDC Western District of Texas, Case: Non-Infringement, Invalidity, Code Reviews, etc. Attorney Firm: Orrick Law Technology: WIFI and other technologies. Q1’2023 – Settled | |
22 | Seven Networks v. Google– USDC Eastern District of TexasExpert Witness for Seven Networks Case: Patent Litigation Attorney firm: Thompson and Knight LLP Technology: Software for data synchronization Case Settled 2017 | |
23 | TOT Power Control, SL v. T-Mobile, USDC Eastern District of TexasTOT Power Control, SL v. Handset Manufacturers, Massachusetts.Code Review, Infringement, Validity Case: Patent Infringement Attorney Firm: DiNovo and Price Technology: Power control, Open Loop and other systems in 3GPP systems Q3;2023- Ongoing | |
24 | TCL – assistance & consulting for several patents and IP cases – Taiwan Q2,2022 – Preliminary analysis on WIFI technologies |
25 |
Stone v. AT&T, Vehicle, USDC Southern District of California |
26 | Barkan v. Sprint, USDC Eastern District of Texas, Attorney Firm: Susman Godfrey, LLP Technology: PicoCell, MicroCell, and other small cells. Case: Technical Expert Reports, Code Reviews, 4G, PicoCells, Tunnels, Invalidity and Infringement Reports, Deposed (Q2’2020 – Case Settled in 2021) |
27 | Bell Northern Research, LLC v. LG Electronics, Inc., et al, USDC Southern District of California Attorney Firm: Skiermont Derby LLP Case: Patent Infringement & Validity Federal Case. Code Review, Expert Witness Declaration and IPRs (3) – Beamforming and Wireless Technologies Technology: Beamforming, WIFI, and other Wireless TechnologiesSettled around 2020, Terminated Institution |
28 | Bell Northern Research, LLC v. Samsung et al, USDC Eastern District 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 Technology: Beamforming, WIFI, and other Wireless TechnologiesCase Settled around 2020, 2 IPRs not instituted |
29 | Blue Radios v. Kopin, Inc, USDC, District of Colorado Blue Radios v. HBSR, Massachusetts District Court, Expert Witness for Blue Radios –Attorney Firm: Sheridan Ross, Jeffer Mangels Butler & Mitchell LLP, and others Case: Patent Litigation, Code Review, Trade Secret Theft Matter in Wearables, Bluetooth, User Interfaces, Supplemental Report, Licensing Anaylsis, Head Mounted Displays, Military Technologies (ITAR) Technologies: Military – Requires ITAR clearance, Wearables, and others. Ongoing (Deposed 2-times, 720 Hearing – Motion Denied to defendant Trial scheduled, 24.8M award to Blue Radios. |
30 | Contour Data Solutions v. Gridforce, CDW, USDC Eastern District of Pennsylvania, Case Technical Expert Reports (Data Center, Cloud and Virtual Machines, Trade Secrets) Attorney Firm: Vedder PriceDeposed and Expert Report Files Technology: Cisco Routers, Networking , Data Centers, Internet ProtocolsQ1’2021 – Settled |
31 | Workspot v. Citrix – PTAB, IPR2019-01002 – Declaration for CITRIX Case: Patent Trial and Appeals Board Attorney Firm: DLA Piper(Deposed, instituted but all claims held patentable – PTAB judges agreed with my analysis., IPR denied for Citrix patent |
32 | Express Mobile v. DreamHost, LLC – Expert Witness – USDC District Court of Delaware – 2019Case: Patent Infringement – eCommerce Platforms, Javascript, Technology: E-commerce, javascripting, networking, databasesAttorney Firm: Devlin LawExpert Reports Q1’,2018 – Case settled in 2019. |
33 | XCommerce v. Express Mobile, Express Mobile v. BigCommerce, USDC Eastern District of Texas and USDC Northern District of CaliforniaCase: Patent Infringement – Virtual Machines, e-Commerce Platforms, PHP/JavaScriptAttorney Firm: Devlin LawTechnology: E-commerce, javascripting, networking, databasesExpert Witness for Express Mobile. Review code for client, claim charts, code reviews, invalidity defenses, Deposed, Trial Scheduled and PendingQ1’20218 – ongoing |
34 | Flexiworld v. Amazon, others, USDC Western District of Texas, Technical Expert Reports (Streaming Technologies) (Withdrawn) |
35 | Gravel Inc v. T-Mobile, Bazaar Technologies, Target and other defendants, USDC Eastern District of Texas Case: Patent Infringement, Code Reviews, 101 issues, claim construction. Expert ReportsAttorney Firm: Devlin Law Some cases settled, except with Bazaar Voice Inc & others still ongoingReports, Code Reviews e-Commerce Platform, Code Reviews. Server Gradle PHP, Java serverQ1’2022 – Settlement |
36 | Kaiffi v. T-Mobile, Verizon, USDC Eastern District of Texas,Technical Expert Reports (Streaming and wireless) (Withdrawn by Client) |
37 |
Mediatek, et. al v. Nippon Telegraph, Nippon Telegraph v. Media Tek, USDC Eastern District of Texas – IPR2020-01607, Declaration and Reports, IPR and USDC |
38 |
Mobility Workx v. T-Mobile, Inc |
39 | Mobility Workx v. CellCo Partnership (Verizon Wireless,) USDC Eastern District Texas Damages Expert Witness for Mobility Workx, LLC – Daubert challenged, scheduled to testify in court for reasonable Royalty Case: Patent Litigation and Damages Expert Royalty Calculation Attorney Firm: Machat Law and HDMN LawDeposed, Expert Report on DamagesQ1’2016 – Case Settled 2021 |
40 | Netapp v. Proven Networks, PTAB Case: IPR2020-01436, Proven Networks vs. Netapp USDC Western District of TexasDeclaration and Reports, Case: Network Storage, Protocols, Caching devices. Code Reviews, Infringement, Validity, Deposed for IPR, Not Instituted, Infringement, and Validity. Attorney Firm: Russ August & KabatQ1’2021 – Settled in 2022 |
41 | Talent Mobile Development v. Headios Group -USDC California Case: Trademark, Mobile Software, iOS and Android Applications Attorney Firm: Machat LawTechnology: Mobile Applications, Android/IOS Apps.Jury trial testimonial with 700k award (Trial Testimony)Mid 2018 – Q1, 2020 |
42 | TPI v. Keller Williams, Inc, USDC Western District of Texas Case: Damages and Technical Expert Witness, Trade secrets, Reasonable royalties,software. Attorney Firm: White & Case LLP Technology: UI/UX Interfaces, Mobile Design, Mobile apps.Q1,2019 – Settled 2020 (Deposed, Settled) |
43 | TrackTime, LLC vs. Amazon, Inc – Delaware District CourtDeposed, Expert Reports on Infringement and Invalidity, Code Reviews Case: Patent Infringement on Amazon Music Tap-to-Jump and Immersion Reading Multi-Page View Technology: Multimedia Audio, Gesture interfaces, UI/UX design Attorney Firm: Dunlap Bennet & Ludwig Trial: Testimony at Jury Trial – Infringement, Validity, Trial Testimony with Judge Norakia. Client lost. Q2,2022 – Q3,2023. |
44 | University of Florida Research Foundation, Inc. et. al. v. Motorola Mobility LLC. At Southern District of Florida Attorney Firm: Meltzer Law and Lundwall Law Case: Patent Litigation Matter – Wireless Communications and EmulationCase settled in 2014 (Deposed)Q1’2011 – Settled 2014 |
45 | Eric Mendis v. BMW North America – Report on Wireless Charger analysis for a BMW X5 vehicle and other vehicles. Attorney Firm: Law Office of Boris Davidovskiy, P.C. Case: Consumer and Breach Q2’2023 – present. |
46 | LG Electronics vs PANTECH – IPR2023-01271 Attorney Firm: Devlin Law Case: Patent Trial Board, on User Interfaces, IPR Declarations. Q4’2023 – settled |
Damages Expert Witness for Intellectual Property and Patent Cases
- Mobility Workx CellCo Partnership (Verizon Wireless), Representing Mobility Workx, LLC in E.D. Texas, Daubert challenged, scheduled to testify in court for reasonable Royalty.
- 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).
- LG Electronics v. PANTECH – IPR2023-01271 (Final Decisions, some claims valid)
- Cisco Systems vs. Corrigent Networks – IPR2023-00169 (Instituted)
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, eCommerce PlatForms, etc.
- 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)