Wayne A. Jones has served over 30 years as a litigator, strategist, corporate officer, and senior partner specializing in Intellectual Property litigation and defining and implementing high margin business/IP strategies in the high tech arena.
Mr. Jones has litigated a wide range of patent and trade secret cases in courts across the country. He has led highly complex patent reexamination efforts for industry leading portfolios.
Corporate and International IP Leadership
Mr. Jones began his career in 1981 in New York City as an IP litigator with the firm of Kenyon & Kenyon. After twelve years on litigation of some of the largest intellectual property cases of the time, he was recruited to leave private practice and assume corporate officer roles. He was:
• Chief Patent Counsel – Occidental Chemical Corporation (1992-1996)
• Vice-President and Chief Patent Counsel – Alcatel USA/DSC Communications (1996-2000)
• Senior Vice-President and General Counsel – SAPMarkets, Inc. (2000-2001)
• Chief IP Officer – SAP AG (2001-2003)
In addition to representing clients in IP matters, has also served on or as:
• President – Association of Corporate Patent Counsel (the association of the Chief Patent Counsel of major U.S. companies),
• Executive Committee – Association of Corporate Patent Counsel (7 years),
• Board of Directors – National Inventor’s Hall of Fame, and
• Board of Directors – Intellectual Property Owners Association.
Litigation and Strategic IP Leadership
In 2003, after ten years as a corporate officer, Mr. Jones returned to private practice and assumed duties as the Managing Shareholder of the Silicon Valley Intellectual Property group of one of the largest law firms in the world. In 2009 he formed his own firm, the Jones IP Group, of which he is Managing Partner.
The Jones IP Group specializes in litigation and defining and implementing combined business and intellectual property strategies for large and small clients. The Group’s practice includes IP litigation in state and federal courts, international litigation counseling, IP strategy formulation and implementation, counseling, advising, licensing, and lecturing.
IP Strategy Leadership
Mr. Jones has designed and implemented strategies of numerous companies ranging in size from Global 100 to startups. Examples of some of his IP strategy clients include: SAP AG, Alcatel USA, Inc., Johnson & Johnson, Pepsico, Health Catalyst, DSC Communications Corp., Occidental Chemical Corp., Occidental Petroleum Corp., SAPMarkets, Inc., Keytronics, Inc., Soxcs Technologies, Inc., Navitas Pharma, Inc., Elesys, Inc., Droplet Technology, Inc., Gemio Technologies, Inc., InMagic, Tioga Technologies, Ltd., and Laserscope Corp.
IP Litigation Leadership
Mr. Jones has been lead counsel on litigations and/or reexaminations of patents or trade secrets covering the core products of major companies. Examples of some of his representations include:
- Acting as lead counsel defending against patent infringement claims in obtaining a summary judgment type claim construction in Federal District Court prior to incurring the costs of litigation discovery, winning the claim construction, and then arguing and winning the resulting appeal in the Court of Appeals for the Federal Circuit for dismissal of the entire suit.
- Acting as lead counsel in representing a major medical device company against patent infringement claims in the Eastern District of Texas, the case was successfully moved to the District of Delaware where it was stayed pending reexamination proceedings.
- Acting as lead counsel in representing a major medical device company against patent infringement claims in the United States District Court of Delaware, the case was concluded with defendant successfully pressing it’s counterclaims.
- Acting as lead counsel in representing a medical monitoring and network equipment company against patent infringement claims in the United States District Court, Southern District of Texas, and obtaining perhaps the earliest order for mini-trial of invalidity of a patent ever issued by that court.
- Acting as patent lead counsel in representing a wireless equipment company in bringing a Declaratory Judgment of invalidity in the Northern District of California of patents asserted against it by patentee’s licensing program. Also defending patent infringement claims eventually lodged against our client. Successful settlement was reached.
- Acting as lead counsel in representing a leading telephone handset equipment manufacturer – achieving a greater defense success than other defendant manufacturers – in a patent infringement defense in the United States District Court, Eastern District of Texas.
- Acting as lead counsel in defending a portfolio of eight patents in ex parte and inter partes reexamination and obtaining issuance of all patents after original rejections in the United States Patent and Trademark Office.
- Acting as lead counsel in representing a client in the medical laser field in defense of charges of infringement of three patents in the United States District Court, Central District of California.
- Acting as lead counsel in defending patent infringement claims including ultraviolet disinfection systems for HVAC equipment in United States District Court, Central District of California.
- Acting as lead counsel in prosecuting a trade secret case involving computer keyboard keycaps, resulting in a permanent injunction and favorable settlement in Delaware state court.
- Prosecuting a trade secret case against a competitor that induced former customers to disclose technology and breach trade secret agreements in Texas state courts.
- Counseling a communications company in a trade secret case that upheld a US$269 million jury verdict for the company in United States District Court, Northern District of Texas.
- Advising a major film and camera manufacturer in one of the largest patent infringement actions, resulting in a favorable outcome for the client in United States District Court, District of Massachusetts.
- Advising a major automobile manufacturer in a patent infringement action regarding catalytic converter systems; the United States Supreme Court denied the competitor’s petition for certiorari.
Lectures and Presentations
Mr. Jones is frequently asked to present on IP subjects, most commonly on IP strategies and implementations as well as the implications of developing law. Some of his presentations are recited below:
- 2016 Annual Summer Meeting, the Association of Corporate Patent Counsel
The Defend Trade Secrets Act – an Act with Many “Scenarios” - 2009 Annual Summer Meeting, the Association of Corporate Patent Counsel
Implications for Corporate IP Operations of Recent Developments in IP Law - 2008 Annual Summer Meeting, the Association of Corporate Patent Counsel
Implications for Corporate IP Operations of Recent Developments in IP Law - Moscow Venture Capital Summit 2008
U.S. and Worldwide Intellectual Property Systems and Strategies - Squire Sanders 2008 – Private Emerging Technologies
Intellectual Property Strategies - Telegraph Hill, Venture Funds – 2008
Portfolio Analysis – IP Centric - Indonesian Judges Assembly 2007
Market Driven IP Legal Systems and Strategies - Stanford University, Entrepreneurs and Business, 2006
Intellectual Property Tools and Strategies - NANO 2005 Conference, Santa Clara, CA
Winning Strategies for IP Protection, Management, and Licensing - International Congress of Nanotechnology 2004, San Francisco, CA
IP and Business Strategy in Nanotechnology
Education
- J.D., Duke University School of Law, 1981
- Judicial Board of Duke Law School
- B.S., with High Honors, Chemical Engineering, Brigham Young University, 1978
- BYU Honors Program
- President of the BYU Engineering and Technology Council
- Vice President, BYU Chapter of Tau Beta Phi
- BYU Freshman Basketball Team
Honors
Mr. Jones was named Outstanding Alumnus for the year 2010 by the BYU Chemical Engineering Alumni Association.
Languages
Mr. Jones has lived outside the United States for extended periods, including in Indonesia, India and Norway. He speaks Indonesian fluently and has co-authored a 350 page language training manual for Indonesian.
Admitted to Practice
Mr. Jones is admitted to practice in the Bars of:
New York
District of Columbia
California
The Court of Appeals for the Federal Circuit
Mr. Jones is also licensed to practice before the United States Patent and Trademark Office.