OVERVIEW

Daniel A. Valenzuela

Partner

Dallas

2121 N. Pearl Street
Suite 700
Dallas, TX 75201

F 214-258-4199

As a registered patent attorney and litigator, Daniel Valenzuela delivers problem-solving skills, legal strategies, and zealous advocacy to meet clients’ objectives. He focuses on complex patent litigation across the country and post-grant proceedings before the United States Patent and Trademark Office.

OVERVIEW
EXPERIENCE
EXPERIENCE
PRESENTATIONS AND PUBLICATIONS
INSIGHTS & EVENTS

OVERVIEW

Daniel represents clients who work with a wide range of technologies, primarily in the telecommunications, automotive, LED, railcar, and gaming industries. Specifically, he has worked with location tracking systems, “error-proof” fastening systems, remote checking technology, video conferencing over IP networks, angioplasty with shockwave technology, railcars, meltblown technology, power management software, Internet business methods, two-way radio communications over the Internet, personalized marketing technology, navigation and mapping systems, gaming technology, back lighting technology, optical switches, plant patents, solar-powered and color-changing lighting products, low profile LED light fixtures, and aircraft maintenance systems.

In his litigation experience, Daniel has taken the lead in motion practice, invalidity contentions, infringement contentions, claim constructions, discovery disputes, depositions, hearings, and trials. He has also represented multiple clients in reexaminations and inter partes reviews (IPRs), one in particular resulted in preparing an opposition brief to an appeal before the U.S. Supreme Court with a favorable outcome.

Further, Daniel has handled patent prosecution issues for smart card technology involving biometric authentication and other security features to prevent identity theft. He also has analyzed multiple patents relating to computer software and hardware for licenses and provided strategic direction on the protection of intellectual property for wireless communication systems and in-network security solutions.

Daniel has also taken the lead in representing several pro bono clients in federal and state courts, where he has obtained positive resolutions. This work included breach of contract cases where he served as first-chair trial attorney; taking multiple depositions while briefing and arguing motions in a Section 1983 civil rights action that resulted in a judgment of over $2 million in damages plus attorneys’ fees in excess of $1.9 million; and a federal appeal of a high school student’s right to a Free Appropriate Public Education under the Individual Disability Education Act.

Active in the community, Daniel has delivered IP presentations, volunteered for Career Day at elementary schools, and led panel discussions addressing diversity in the legal field.

Prior to private practice, he served as the law clerk and staff attorney to Judge Mike Herrera of the 383rd District Court in El Paso County, Texas.

While earning his electrical engineering degree, Daniel facilitated the design of a million-dollar project known as the Synchronous Optical Network (SONET) for the Texas Department of Transportation (TxDot) in El Paso, Texas.

Professional and Community Involvement

Member, Intellectual Property Section of the Dallas Bar Association

Member, Dallas Hispanic Bar Association

Member, Hispanic National Bar Association

Honors

Texas Super Lawyers, Rising Star, 2014, 2015, 2018, 2019

Barnes & Thornburg Joseph A. Maley Pro Bono Award, 2020

EDUCATION

University of North Dakota School of Law, J.D., member of the North Dakota Law Review, 2005

University of Texas School of Law, visiting student (concentrating in intellectual property), 2003-2004

University of Texas at El Paso, B.S., electrical engineering, 2002

Bar Admissions

Texas

U.S. Patent and Trademark Office

Court Admissions

U.S. Supreme Court

U.S. District Court for the Eastern District of Texas

U.S. District Court for the Northern District of Texas

U.S. District Court for the Southern District of Texas

U.S. District Court for the Western District of Texas

Languages

English
Practices

Intellectual Property

Internet and Technology

Litigation

Patent Litigation

Post-Grant and Inter Partes Review

EXPERIENCE

Lancium LLC v. Layer1 Technologies, Inc., (W.D. Texas [Waco Division] 2020): Represented Lancium in a patent infringement case relating to power management software in the Bitcoin mining industry; case settled favorably prior to invalidity contentions.
National Steel Car Limited v. Greenbrier-Concarril LLC, et al., (D. Or. 2020): Representing National Steel Car in a patent infringement lawsuit involving light weight railcars; case was transferred from the Western District of Texas to the District of Oregon; case is pending with supportive claim constructions.
Vindolor, LLC v. Best Buy Co., Inc. (W.D. Texas [Waco Division] 2019): Defended Best Buy in a patent infringement case using biometric data for personal identification; case settled after the briefing of a motion to dismiss under 12(b)(6).
Lighting Science Group Corp. v. Shenzhen Jiawei Photovoltaic Lighting Co. Ltd. and Jiawei Technology (USA) Limited, (N.D. Cal. 2017): Defended Jiawei in a multi-patent lawsuit and IPR involving low profile LED light fixtures. The PTAB found claims of one asserted patent invalid and was affirmed by the Federal Circuit. Certain claims of a second and third asserted patent were also found invalid. The PTAB’s decision of no anticipation or obviousness for the remaining challenged claims of the third asserted patent was vacated and remanded under appeal by the Federal Circuit. On remand, the PTAB found all remaining challenged claims of the third asserted patent invalid. Case dismissed with prejudice.
University of Florida Board of Trustees, An Agency of the State of Florida, and Florida Foundation Seed Producers, Inc., a Not-For-Profit Corporation Chartered by the State of Florida v. Hartmann’s Plant Company, (N.D. Florida [Gainesville Division] 2016): Represented the University of Florida and Florida Foundation in a multiple patent case involving blueberry plants. Part of a team to obtain a consent judgment of permanent injunction, willful infringement, and enhanced damages on behalf of the University of Florida.
RFJ Licensing, LLC v. Tait Radio, Inc., (N.D. Texas [Dallas Division] 2016): Defended Tait Radio in a patent case involving two-way radio communications over the Internet. Case dismissed with the plaintiff taking nothing.
CallWave Communications, LLC v. AT&T Mobility LLC, et al. (Delaware [Wilmington Div.] 2012): Defended AT&T in a patent case involving location tracking technology. Case settled more than a month later after the Delaware District Court stayed the case pending IPR.
Simon Nicholas Richmond v. Jiawei Technology (HK) Ltd. et al (3:13-cv-01953 (D.N.J. 2013): Defending 18 manufacturers and retailers in a multiple-patent dispute relating to solar-powered, color-changing outdoor lighting products and certain packaging features relating to similar technology. The actions are consolidated under 3:13-cv-01944. Certain defendants filed IPRs and Reexaminations on some of the asserted patents. The cases remain stayed after the Patent Trial and Appeal Board found all instituted claims invalid. IPR decisions were upheld under appeal before the Federal Circuit. Following briefing on one IPR decision, the U.S. Supreme Court denied the patent owner’s writ of certiorari. Decisions for Second Reexaminations on two patents are under appeal.
Simon Nicholas Richmond v. Forever Gifts et al. (N.D. Texas [Dallas Div.] 2014): Defended Forever Gifts and Walgreens in a patent case relating to solar-powered outdoor lighting products. The case settled after claim construction.
Property Disclosure Technologies LLC v. BRER Affiliates LLC (E.D. Texas [Tyler Div.] 2014): Defended BRER in a three-patent case relating to software that generates real estate disclosure forms with a variety of conditions about certain property. Case settled after the briefing of a motion to dismiss for failure to comply with 35 U.S.C. § 101.
Innovative Display Technologies LLC, v. Best Buy Co., Inc. et al. (E.D. Texas [Marshall Div.] 2014): Defended Best Buy entities in a multiple patent case involving LED fabrication technology. The case settled shortly after filing as part of a larger global settlement involving the patents.
Phoenix Licensing, LLC et al. v. American Express, et al. (E.D. Texas [Marshall Div.] 2014): Defended American Express in a multiple-patent litigation case involving business methods used for personalized communication and marketing. The case settled after claim construction.
Flywheel Fitness, LLC v. Flywheel Sports, Inc. (E.D. Texas [Sherman Div.] 2013): Part of a team to defend Flywheel Sports, which removed a state trademark case to federal court, dissolved a temporary restraining order and obtained a judgment denying the plaintiff's motion for preliminary injunction. The case settled thereafter.
Peschke Map Technologies LLC v. The Irvine Company LLC, et al. (D. Del. 2012): Defended Irvine Company in a patent infringement case relating to navigation and mapping technology.
PT Diagnostics, LLC v Boeing, et al. (E.D. Texas [Marshall Div.] 2012): Represented PT Diagnostics in a multiple-patent case involving aircraft maintenance systems.
Beneficial Innovations, Inc. v Advance Publications, Inc., et al. (E.D. Texas [Marshall Div.] 2011): Defended Village Voice Media Holdings in a multiple-patent case relating to network systems and advertising technology.
Reshare Commerce, LLC, et al. v.The Antioch Co. d/b/a Creative Memories, et al. (D. Minn. 2011): Defended Dermalogica, Inc. in a patent litigation suit relating to a sales payments management system and method. The case settled favorably after claim construction.

*These representations occurred prior to joining Barnes & Thornburg, but a few active matters were transferred to Barnes &Thornburg.

PRESENTATIONS AND PUBLICATIONS

Presenter, “Overview of Intellectual Property Law and Evolution of Technology,” Career Day at Brinker Elementary School, Jan. 20, 2023
Co-presenter, “Constitutional Day,” Vaughan Elementary School, Sept. 16, 2022
Moderator and panelist, “The Journey of Hispanic Attorneys,” BTLatinx Webinar, Oct. 7, 2021
Co-presenter, “Protecting IP Rights and Avoiding an Invalid Patent in the Future,” Barnes & Thornburg LLP Intellectual Property Conference in Indianapolis, Indiana, Nov. 8, 2018
Co-author, "Weighing up IPRs," Intellectual Property Magazine, Sept. 2018
Moderator and panelist, “Panel Discussion for UTEP Law School Preparation Institute,” Dallas, May 18, 2017
Lead presenter, “Best Practices in Battling the New IPR Trolls: What Patent Owners and Businesses Need to Know and Do?” The Knowledge Group, Live Webcast, April 12, 2017
Co-presenter, “The Anatomy of a Patent Case,” CLE, Dallas, Aug. 4, 2016
Co-presenter, “Overview of Intellectual Property Law,” Dallas Bar Association's Lawyers in the Classroom, Career Week at William Lipscomb Elementary School, Dallas, Nov. 20, 2015
Author, “Can an Inventor Continue Protecting an Expired Patented Product via Trade Dress Protection?,” 81 North Dakota Law Review 145, 2005