Overview

Alfredo Villanueva is a partner with the firm’s Technology & Intellectual Property practice group. Alfredo’s practice comprises an array of patent and trademark services for clients ranging from individuals and start-ups to medium and large public companies. Clients have come to rely on Alfredo for his broad IP practice, as he regularly advises and assists clients in developing, procuring, and protecting trademark and patent assets. Alfredo concentrates his practice on U.S. and foreign patent procurement, portfolio management and counseling, patent validity and infringement evaluations, freedom to operate and clearance opinions, and patent litigation. Alfredo has a technical background in mechanical engineering and has an advanced degree in bioengineering, making him well-suited to handle diverse technologies. His patent experience spans a wide range of technology areas, including notable experience with mechanical, medical, and electromechanical devices.

As part of his trademark practice, Alfredo works with clients to develop and protect strong trademarks, as well as enforce trademark rights through infringement proceedings, opposition and cancellation proceedings, and domain name arbitrations.

Prior to embarking on his legal career, Alfredo was a graduate student researcher at Richmond Field Station, Richmond, California, where he focused his research on tendon mechanics and repetitive stress injuries. Alfredo was also a graduate student instructor at the University of California, Berkeley where he taught courses on biomechanics.

Education

University of Oregon School of Law, J.D., 2009; Order of the Coif; Senior Associate Editor, Journal of Environmental Law and Litigation; Chapin Clark Award for Editorial Excellence; President, Latino Law Student Association, 2008-2009; Member, Minority Law Student Association, 2006-2009

University of California, Berkeley/San Francisco Joint Program, M.S. Bioengineering, 2006; National Occupational Research Agenda Grant, 2005-2006; Dean's Health Sciences Fellowship, 2003-2005; National Institute of Health Training Grant, 2003-2005

Harvey Mudd College, B.S. Mechanical Engineering, 2003; Dean's List, 2001-2003; Harvey Mudd College Scholarship, 1999-2003

Admissions

Oregon

U.S. Patent and Trademark Office

Languages

  • Spanish

Experience

Patent Procurement and Portfolio Management

  • Prepares and prosecutes U.S. and foreign patent applications relating to a variety of technologies, with a particular focus on mechanical and medical devices.
  • Develops and implements strategies for helping small and large companies build and manage intellectual property portfolios.
  • Manages worldwide patent portfolios and provides strategic counseling for monetizing patents.
  • Develops cost-effective IP strategies specifically suited for sole inventors and small start-up companies.

Patent Opinion Practice

  • Provides clearance analysis and freedom-to-operate opinions to help companies assess potential infringement risks.
  • Develops strategies to avoid competitor patents, including evaluating non-infringement and invalidity positions.

Patent Litigation

  • Assisted with development of litigation strategy in patent infringement action for eyewear company. Drafted various pleadings and motions, including motions for summary judgment on non-infringement and invalidity grounds, and assisted with expert discovery. Our team successfully obtained a stay of the litigation and ultimately invalidated the competitor patent in Inter Partes Review (IPR).
  • Developed defensive strategies challenging validity of competitor patents and asserting non-infringement positions to avoid litigation disputes and obtain favorable results for various clients.
  • Developed patent enforcement strategies against infringing competitor products, resulting in favorable settlements for various clients.

Technology Areas

  • Medical devices and systems, including orthopedic implants, vascular access and endovascular technologies, stents and stent delivery systems, grafts, vascular filters and vascular snares, surgical tools, needle systems, and medical simulation systems.
  • Mechanical and electromechanical devices, including riflescopes, ballistics, sporting optics, gun safety equipment, optical and bar code scanning equipment, electrical connectors, windows and doors, building materials and products, rescue and evacuation equipment, trailer hitch systems, pulp refiner technologies, apparel, and footwear.

Insights

Speaking Engagements

Recognition

  • Listed in World Trademark Review’s WTR 1000 – the World’s Leading Trademark Professionals, 2023–2024
  • Selected by the Portland Business Journal as a Forty Under 40 honoree, 2021

Affiliations

Professional

  • Oregon Hispanic Bar Association, Member
  • Oregon Patent Law Association, Member
  • Multnomah County Bar Association, Member
  • Oregon State Bar, Intellectual Property Section, Member

Civic

  • St. Andrew’s Legal Clinic, Vice President (current), Board Member, 2015–present
  • Race for Justice Committee, St. Andrew’s Legal Clinic, Member, 2010–2016
  • Leukemia and Lymphoma Society, Team in Training, 2011–2015
  • Friends of the Children, Ambassador Board, 2015

Industries

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