Jonathan S. Barnard
PEOPLE

Jonathan S. Barnard

Associate
barnard.jonathan@dorsey.com

Overview

An Associate in Dorsey’s Seattle office, Jonathan is an experienced patent prosecutor who enjoys helping clients utilize their technical innovations to strategically establish and protect their competitive advantage in a quickly changing economy.

Jonathan is a USPTO-licensed patent attorney who provides patent-related services for clients ranging from emerging start-ups to large public companies. With a background in applied mathematics and physics, Jonathan concentrates his practice on patent harvesting, U.S. and foreign patent strategy, patent preparation, and patent prosecution in a wide variety of technology areas, and particularly for companies in the computer software, cloud computing, mobile application, telecommunication, and electromechanical areas.

In addition to patent procurement and portfolio management, Jonathan advises clients in the areas of patentability, patent validity, patent infringement, due diligence and freedom to operate, product clearance, pre-litigation counseling, IP licensing, and standards essential patent licensing.

Before joining Dorsey, Jonathan was an associate (2017-2019) and summer associate (2016) at Shook, Hardy & Bacon in Seattle, Washington. While in law school, he worked as a member of the in-house legal department of a large, local technology company, and he was also a judicial extern for Justice Debra L. Stephens of the Washington State Supreme Court (current Chief Justice).

Education & Admissions

Seattle University School of Law (J.D., 2017), cum laude

  • Associate Editor, Seattle University Law Review
  • CALI Award – Intellectual Property Licensing Lab
  • Order of the Barristers
  • Moot Court Board
  • Trustee Scholar (all semesters)
  • ABA National Appellate Advocacy Competition Competitor

Gonzaga University (B.S., Mathematics, 2014), cum laude

  • Pi Mu Epsilon, National Honorary Mathematics Society
  • Merit Scholarships: Regent Scholarship, Walter W. Duncan Memorial Scholarship

Admissions

  • Washington
  • United States Patent and Trademark Office

Languages

  • English

Clerkships

  • Washington Supreme Court, Externship – Justice Debra L. Stephens (current Chief Justice), 2017-2017

Experience

Representative Experience

  • Conducted invention disclosure meetings, prepared US and PCT patent applications, and managed patent prosecution in technologies including:
    • EE/CS technologies including virtualized systems and servers, artificial intelligence systems, neural networks, encryption and network security, wireless networking protocols, power systems, control systems, telecommunications systems, signal processing, cloud computing applications, peripheral device systems (IoT Devices), cloud video gaming, computer graphics and animation, audio engineering and computer music, analytical forecasting, RFID systems, online auction, and payment processing
    • Mechanical Devices including robotic systems, construction equipment, and motorized furniture
  • Drafted opinions for patentability, patent infringement, and patent validity issues
  • Drafted claim charts for both directed prosecution and infringement defense strategies
  • Conducted patent portfolio analyses of over 1000 U.S. patents and pending applications
  • Reviewed and analyzed hundreds of technology transfer and technology license agreements, including licenses for products (software/hardware) as well as Standards Essential Patents (SEPs)
  • Authored articles focusing on current and on-going cloud-related patent litigation, including suits brought by competitors and non-practicing entities
  • Counseled start-up clients regarding patent portfolio development based on their overall business strategy

News & Resources

Legal Writings

Law Review Articles 

  • A Brave New Borderless World: Standardization Would End Decades of Inconsistency in Determining Proper Personal Jurisdiction in Cyberspace Cases, 40 Seattle U. L. Rev. 249 (2016).

Other Legal Articles

  • Audio Giant Silencing the Competition: Sonos Continues its Competitor-Centric Patent Offensive, this time against Bluesound and their PULSE line of Wireless Networked Audio Technology, Cloud IPQ: Enhancing Your Cloud IP IQ (August 19, 2019)
  • Zillow Sues Rival Compass Alleging IP Theft and Breach of Contract Over Its Artificial Intelligence, Machine Learning, and Cloud Computing Real Estate Technologies, Cloud IPQ (May 16, 2019)
  • Your Card’s Been Declined: Patent Troll Vindolor Continues its Year-Long Point-of-Sale Patent Litigation Campaign against Three New Unsuspecting Household Names, Cloud IPQ (May 18, 2019)
  • NICE files Patent Lawsuit against CallMiner over Cloud-Based Speech Analytics, Call Monitoring, and Data Security Technology Solutions, Cloud IPQ (January 29, 2019)
  • Tax Compliance Giant Not in Compliance? PTP OneClick Asserts Patent Infringement and Trade Secret Misappropriation Claims Against Avalara in Recent Lawsuit, Cloud IPQ (December 11, 2018)
  • WARNING – All Activities are being Monitored: I-View Now Asserts Its Centrally-Monitored Cloud Architecture Security Technology in Patent Suit against Police Priority, Cloud IPQ (October 20, 2018)
  • Your Number’s Been Blocked: UCaaS Incumbent RingCentral Asserts its Communications Solutions in Patent Assault against Competitor Dialpad, Cloud IPQ (September 13, 2018)
  • Tesla Seeks Inspection of Former Employee’s Cloud Storage Accounts – Lawsuit Highlights the Need for Diligent Security Efforts by Cloud Technology Users, Cloud IPQ (July 10, 2018)
  • Cloud Cybersecurity Solutions Under Siege From Patents, Again: Cybersecurity Companies Protect Customers From Malicious Attacks, But Can They Protect Themselves?, Cloud IPQ (May 29, 2018)
  • Loved by Many, Cloud-Based Remote DVR Programming Functionality Falls Victim as Rovi Files Second Patent Infringement Strike against Comcast, Cloud IPQ (March 19, 2018)
  • Cloud Cybersecurity New Hot Area for Patent Disputes: Blue Coat Systems in Major Patent Battle on its Cloud-based Security Products, Cloud IPQ (January 22, 2018)
  • Cloud Printing Companies in a Jam, Face Battle with Patent Trolls, Cloud IPQ (September 29, 2017)

Acknowledgements

  • Marilyn J. Berger, John B. Mitchell, and Ronald H. Clark, Pretrial Advocacy: Planning, Analysis, and Strategy (5th ed., 2017) (Special Contributor/Acknowledgement and Research Assistant)
  • Ronald H. Clark and Thomas M. O’Toole, Jury Selection Handbook: The Nuts and Bolts of Effective Jury Selection (2017) (Special Contributor/Acknowledgement and Research Assistant)

Industries & Practices

  • Cybersecurity, Privacy & Social Media
  • Intellectual Property Litigation
  • Patent Prosecution, Portfolio Strategy & Management
  • Technology
  • Technology Commerce
  • Telecommunications

Professional & Civic

Professional Achievements

  • The Promise of Justice Initiative: Jim Crow Juries / Unanimous Juries Project – Pro Bono Attorney
  • KIND: Kids in Need of Defense – Pro Bono Attorney
  • QLaw Foundation – Board Member, Board of Directors
  • Pride Foundation – Higher Education Scholarship Selection Committee (STEM fields)
  • Thurgood Marshall College Fund – Higher Education Scholarship Selection Committee (STEM fields)
  • The National LGBT Bar Association
  • QLaw: The LGBT Bar Association of Washington
  • ChIPs: Advancing Women in Tech, Law, & Policy
  • Washington State Patent Law Association
  • IPO: Intellectual Property Owners Association

Community Involvement

  • Nike Youth Special Olympics (Oregon) – Volunteer
  • St. Judge Children’s Research Hospital – Volunteer

Accolades

  • Featured in JD Supra’s “The Year in Patents – Our Popular Reads in 2019,” a year-end-list honoring those who have authored the most read patent articles in 2019 (Article Recognized: NICE Files Patent Lawsuit against CallMiner over Cloud-Based Speech Analytics, Call Monitoring, and Data Security Technology Solutions)
  • Featured in JD Supra’s “The Year in Patent Litigation – Popular Reads in 2018,” a year-end-list honoring those who have authored the most read patent articles in 2018 (Article Recognized: Loved by Many, Cloud-Based Remote DVR Programming Functionality Falls Victim as Rovi Files Second Patent Infringement Strike against Comcast)