PTAB Expert Witness

Dr. Edwin A Hernandez-Mondragon

PTAB Expert, Expert Witness, Inventor Technology Professional, & Damages Expert Witness

PTAB Expert Witness with more than over 35+ IP cases, 30+ deposition, 3 trial testimonies and many PTAB IPR cases denied or settled. My expertise has been truly valuable to many of my clients for firms like Dickinson & Wright, Kasowitz, McCool Smith, DLA Piper, and many others. I am also the inventor of 15 issued US Patents, some have been licensed to large corporations including Verizon Wireless.

I offer my services as a consultant and expert witness in the areas of intellectual property and licensing. I have extensive expertise in technology licensing, startups, patents, software, source code review & technology audits. Additionally, I have assisted clients in forensic investigations, cyber security, and other technological strategic decision needs for startups, ventures, and intellectual property matters. My CV is attached for your scrutiny

A quote from PTAB judges in an IPR matter:

I assist my clients in matters that include:

  • Inter Parties Reviews and Patent Trial Appeals Board (PTAB and IPR Expert Witness)
  • Patent and Technical Expert Witness for Trial, Defense or Patent Infringement
  • Source Code Reviewer and Analysis for infringement (or not), claim charts, and evidence gathering & review of discovery information,
  • Damages Expert Witness experience, specially testimony on royalties for software, wireless patents
  • Preliminary Infringement Analysis with Evidence of Use,
  • Trade Secrets and Intellectual Property disputes, and
  • Experience in the E.D. of Texas, Northern District of California, Colorado, Florida, Delaware, and many others, including International Trade commission (ITC)

You can contact me directly via email

I have been panelist in multiple podcasts and intellectual property forums:

Dr. Hernandez Cybersecurity Breaches

PTAB Expert Witness Experience

I provide testimony for patent cases, trade secret litigation, ITC matters, IPR and PTAB proceedings (https://edwinhernandez.com/dr-edwin-hernandez-biography/expert-witness-cv/).

I have assisted companies in intellectual property matters as defendants expert or plaintiff expert, from small clients to major clients. The list of cases as you see below will include many large and small firms, as some names I can cite my involvement in cases with defendants or plaintiffs such as:

BMG, KOM Inc, Intellectual Ventures, NetApp, Amazon, Tracktime, Samsung, BNR, PACTECH, LG Electronics, Google, CDW, Motorola, Nippon Telecom, Verizon Wireless, BNR, Samsung, LG, L2MT,, NOKIA, Proven Networks, Magento, Seven Networks, Verizon, T-Mobile, AT&T, Motorola, Keller Williams, TPI Cloud Hosting, Bank of America, Talent Mobile, Blue Radios, Express Mobile, DISH, CITRIX, KOPIN, and a wide-range of other clients.

Great success assisting clients in IPR Matters, many IPR and PTAB Cases including:

  • Workspot v. 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 (Not Instituted, 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, settled).
  • LG Electronics v. PANTECH  – IPR2023-01271
  • Cisco vs. Corrigent Networks – IPR2023-00169
  • Samsung vs. Mojo – several IPRs

Damages Expert Witness

  • Mobility Workx vs. Verizon Wireless, Representing Mobility Workx, LLC in E.D. Texas, Patent Damages Model – Reasonable Royalty.
  • TPI Cloud Computing vs. Keller Williams, Trade Secret Valuation, Damages. (Settled)
Law Firms & Small to Large Corporations

Software Audits and Code Reviews – Forensics & Cybersecurity

  1. 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 2017-2018
  2. Auditing of Honduran Elections, Forensics and fraud detection and analysis (Pro-Bono) in 2018
  3. Auditing of Honduran Elections, Forensics and fraud detection (2021)
  4. Code Reviews & Clean Room Environments
    • C/C++ sources from several vendors in 802.11, LTE, 3G systems, Bluetooth, BSP Systems, Augmented Reality, Wearable
    • Bash, Docker, PHP, Javascript, Typescript for e-commerce platforms
    • VLSI and low-level drivers in C/C++
    • PowerShell and others for a Windows platforms, Virtual Machines & Cisco Routers.

Source Code Reviews and Experimentation

Technical Articles and Intellectual Property Opinions from my blog:


Dr. Hernandez at the Mobile World Congress in Barcelona

Expert Witness Cases & Intellectual Property Consulting

Expert Witness Cases with Jury Trial

  • Talent Mobile Development, Inc vs Headios Group, Inc – Trademark Infringement in Federal Court in Santa Ana, CA – Advised counsel in winning verdict for my client (700k)
  • Tracktime vs. Amazon Web Services, LLC – Patent Dispute on UX touch interfaces for music and audo books – US District of Delaware.
  • Blue Radios v. Kiopin – Trade Secrets and Patent Disputes – Federal Court – Denver, CO

Expert Witness Cases – Ongoing or Settled (Patents, Trademarks, and IPRs)

  • University of Florida Research Foundation, Inc. et. al. v. Motorola Mobility LLC. Filed in U.S. District Court for the Southern District of Florida – Case settled in  2014 (Deposed)
  • Virtela Technology Services v. Andrew Funk, File in the US District Court of Denver, Colorado, Expert Witness for Andrew Funk – Case Settled in 2016.
  • Del Castillo v. Bank of America – Expert Witness for Bank of America – Case settled 2017
  • Seven Networks vs. Google –   Expert Witness for Seven Networks – 2017
  • Blue Radios v. Kopin – Expert Witness for Blue Radios– Colorado  – 2017 – ongoing (Deposed)
  • Mobility Workx v. T-Mobile – Case Settled – 2017 (Deposed)
  • Mobility Workx v. Verizon Wireless, Damages Expert Witness for Mobility Workx, LLC in E.D. Texas – 2017 – ongoing (Deposed , Case Settled)
  • Mobile Manufacturer v. Carrier, Eastern District of Texas, Expert Witness for Mobile Manufacturer (Confidential & Settled) in 2017
  • Talent Mobile Development v. Headios Group (California Federal Court, 2018
    • Trademark/Mobile Software)  – Jury trial testimonial with 700k award to my client (Trial Testimony)
  • Key West Golf Club v. Cable Provider – Preliminary study – Key West, FL, 2019
  • Express Mobile v. DreamHost, LLC – Expert Witness – US District Court of Delaware – 2019
  • Stone v. AT&T, Vehicle – Expert Witness – Expert Witness for AT&T on TCPA Matters, MMS Messaging – US District of San Diego, 2019 (Deposed, Settled)
  • XCommerce v. Express Mobile, Express Mobile vs. BigCommerce, others – Expert Witness for Express Mobile.  E.D District of Texas and California Northern District, Review code for client, claim charts, DOE, invalidity defenses, (Deposed, Trial Scheduled
  • Workspot v. Citrix – Expert Witness IPR2019-01002-  – Expert Witness for CITRIX  – PTAB, 2019 – (Deposed, Instituted but all claims held patentable)
  • DISH Network LLC v. Multimedia Content Management LLC – IPR2019-01014 and IPR2019-01015, Expert Witness for Multimedia Content Management, LLC, 2019 (Not instituted, Not Instituted)
  • TPI vs Keller Williams, Inc – Damages and Technical Expert Witness, Trade secrets, software,  Texas, 2020 (Deposed, Settled)
  • Bell Northern Research, LLC v. LG Electronics, Inc., et al,  Infringement & Validity Federal Court, IPRs (3), California, Settled, Terminated Institution
  • Bell Northern Research, LLC v. Samsung et al,  Infringement & Validity Federal Court, IPRs (3), California,  Assisting infringements reports & damages models, Technical Expert Reports – Case Settled, 2 IPRs not instituted
  • TCL –  assistance & consulting for several patents and IP cases. 
  • Barkan v. Sprint – E.D. of Texas, Technical Expert Reports, Invalidity and Infringement Reports, Deposed (Case Settled)
  • Kaiffi v. T-Mobile, Verizon  – E.D. of Texas, Technical Expert Reports  (Streaming and wireless) (Withdrawn by Client)
  • Flexiworld v. Amazon, others, Texas Western District, Technical Expert Reports  (Streaming Technologies)  (Withdrawn)
  • Contour Data Solutions v. Gridforce, CDW – Pennsylvania E.D., Technical Expert Reports (Data Center, Cloud, Trade Secrets)
  • Mediatek, et. al v. Nippon TelegraphNippon Telegraph vs. Media Tek  IPR2020-01607, Declaration and Reports, IPR and US District court  (Modulation, RF, OFDM, other wireless comm issues, Deposed IPR, Validity and Infringement).
  • Netapp v. Proven Networks, IPR2020-01436, Declaration and Reports, and Federal Circuit Case, Proven Networks v. NetApp, Deposed for IPR
  • BNR (Mobile / Wireless Patents) – ITC Case at U.S. International Trade Commission Investigation No. 337-TA-3568, Certain Electronic Devices Having Wireless Communication Capabilities and Components – Ongoing  – Mobility Patents, WIFI 
  • L2MT vs Google – moved to the Northern District of California, Claim Construction Assistance (on hold) 
  • Gravel Inc v.  T-Mobile, Amazon, and other defendants – E.D. of Texas 
  • Many others 
  • Advising – Pre-trial / 4 Confidential Defendants/Plaintiffs (2013-2014)

Mobile and Wireless Expert Witness

An expert in wireless & mobile computing with deep understanding and knowledge of smartphone technologies from Android & iPhone applications to 5G signaling protocols. An expert in computer and software engineering with several decades of hands-on experience in the field from the 1990s.

I worked at very early stages of the mobile and wireless technologies fields when systems and smartphones began proliferating all under my Ph.D research. I continue my research in the fields of wireless communications, mobile, media streaming, augmented reality, machine learning and internet networking.

I have worked for Fortune 500 companies like Microsoft and Motorola. As a wireless expert I have 13 issued patents in the field of mobile and wireless technologies and over 5 years of experience in Federal Court.  As a media streaming expert, I have worked with cable technologies, CDNs, mobile applications, and have filed a patent portfolio in this field including an additional issued patent.



Areas of Expertise on Wireless and Networks

  • Expert in Wireless Networks and Infrastructure
  • Wireless Emulation and Simulation
  • Mobile IP, PMIP, GTP and 4G/LTE Mobility Protocols
  • RF, Signaling, and Protocols
  • Local Area Network Expert
  • Mobile Applications and software methods
  • Media Streaming and MPEG/Cable TV systems
  • MPEG-2 and DVB Systems
  • E-Commerce
  • OFDM, Beamforming, 5G Expert
  • Cloud-based Platform
  • High-Performance Computing

Web and Cloud Expert

  • HTML5 and widgets, JSON/XML REST API
  • CDN and Cloud-based Platforms Expert
  • Software-defined Radios and Network Function Virtualization (NFV)
  • Internet and broadband communication systems
  • Cloud Computing and Storage Platforms Expert
  • Internet Of Things Expert
  • Big Data Analysis
  • Network Function Virtualization
  • Bluetooth and WiFi Networks
  • 5G Systems with MIMO and Beamforming patterns
  • Location-Based Platforms
  • Wearables and IOT Devices
  • Linux and Networking Expert / Routing / Firewalls / Fiber Optics
  • Software Engineer with expertise in Java, Python, PHP, C/C++
  • Cable TV, Linear Programming, DVB-C, DVB-S, DVB-T Systems
  • Encoding and streaming
  • Drivers and memory optimization
  • Extensive PCAP log analysis
  • Hardware debugging and electronics analysis
  • Block Chain and Cryptographic protocols
  • Coins and Tokens, Consensus Algorithms, Decentralized Financing (DEFI)

3D Printing, Prototype design, Electronics,  Artificial Intelligence, Computer Vision and Data Analytics.


Software and Technology Auditing

I recently completed a software & technology audit to a government institution called “SINAP,” which refers to the National Property Institute of Honduras.  This is a major software project with millions of lines of code,  managing TeraBytes of geospatial information, and modern databases.  The audit consisted in reviewing their Java code base, .NET systems, HTML/CSS, and many processes that  handled thousands of transactions. The software deals daily  with property titles and is part of the digital marketplace of Honduras. The audit was a success and we expect to help more institutions on that front.

30 years of experience with software, code, math, & algorithms

Damages

I came up with a Damages model using Key Performance Indicators for LTE that can be used for Cloud-based and software & Telco products (KPI Damages Model)

Retaining Fee

This is done in a case by case basis and usually is non-refundable. However in some cases we can allow up to 40% refund, as long as depositions have not been yet performed. Deposition and trial testimony is much higher.  

Please request “University” or “Academic” discount, which is 20% of the usual retainer fee and 20% on the hourly rate.

For a retainer agreement reach me via email to edwin at edwinhernandez d0t com

” Great Job Dr., We were able to find information and determine details in the source code that were unknown to us ” – UTS – Salinas


Lab & Hands-on Testing

As a hands-on expert witness, my lab has the following equipment:

  • ORC, Spectrum Analyzer, Protocol Analyzer, other equip.
  • Power supplies/Electronics
  • IP networks, GbE, Fiber, SDNs, a full cloud with Xen/VmWare
  • Access to AWS, Azure, and extensive expertise in them
  • PCAP capture and analysis
  • MPEG Tools for debugging and analysis
  • DVB-C and Signal Analysis
  • Access to NFV with IMS and 4G LTE system
  • Access to 3G/UMTS infrastructure
  • Faraday cage and propagation in collaboration with other labs
  • Other equipment can be rented upon request

” I back up my expert reports with solid evidence and arguments. As much as possible, I replicate scenarios in a lab, capturing  logs that replicate behavior, finally I present solid evidence with results for court ”  — Dr. Mondragon


Current “Going Rates”

My expert witness testimony rates are defined according to the work and depending on the case , my services will include:

  • Review of evidence and technical paper, write up of reports, and analysis in conference calls or in person.
  • Deposition rate which includes pre/post preparation timing, and trial rates.
  • Review of evidence and technical paper, write up of reports, and analysis in conference calls or in person.
  • Deposition rate which includes pre/post preparation timing, and trial rates.
  • Travel expenses and special 1/2 rate for waiting time.

Please make sure your attorney contacts me prior to sending me any evidence that needs to be reviewed, Ensure your attorney client privilege is in place.

Dr. Hernandez has wide expertise evaluation evidence and more details at my : Expert Witness Curriculum Vitae

I usually apply a 20% discount for Universities and Academic institutions involved in patent / intellectual property litigation.

If you want to hire my services as an expert witness please reach me via email at edwin at edwinhernandez dot com or call me at 561-306-4996.

Other keywords 

Mobile Expert Witness, Damages Expert Witness, DVB Expert, MPEG Streaming Expertise, Power Management, High-Performance Computing, Fuzzy Logic, Mobile Devices, Reverse Engineering, Code Optimization, Code Reviews, Artificial Intelligence,  Wireless Expert Witness, Smartphone Expert Witness, Mobility Protocol Expertise, Emulation, and Simulation


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COMPUTING & TECHNOLOGY EXPERT

Startups are my daily routing with over 25 years of computing & technology expertise. My experience and current up-to-date knowledge is extremely relevant for a wide array of cases, since mobile technology applies to many different software products and electrical systems.

Mobile expert consulting  can assist you in  your cases involving   of software engineering, electrical  engineering, wireless communications, wireless networks, information security, computer networks, computer vision, computer engineering, mobile devices,  human factors engineering, computer science, and many other products and services pertaining to mobile technology, each of which could potentially become the subject of a possible court case.

Since mobile technology is utilized in such a high number of products and programs, mobile expert witnesses might be sought out for cases involving patent infringement and validity, patent analysis and licensing, and other issues concerning patent and copyright law. Other mobile cases may involve issues with product development, product defects, marketing, and other areas pertaining to consumer electronics.


Download CV of Dr. EDWIN HERNANDEZ

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