Excellence. Integrity. Success.

Andy Himebaugh is an associate who joined Irwin IP in October of 2020 after being a summer associate at the firm in the summer of 2019. Andy’s practice focuses primarily on post-grant proceedings with the Patent Trial and Appeal Board; patent and trademark litigation in U.S. Federal District Courts; appeal practice before the Court of Appeals for the Federal Circuit; and monetization of intellectual property.

Andy’s areas of scientific and technical expertise include genomics, biotechnology, pharmaceuticals, and software, most of which he learned about through opportunities for industry experience and employment prior to beginning his legal career. Since he began to study and practice law, Andy has become knowledgeable about medical devices, mechanical devices, toy and game technology, telecommunications, and industrial design.

REPRESENTATIVE MATTERS

Some of the matters on which Andy has worked (and his specific responsibilities) include:

• Part of a team representing a Fortune 500 company in multiple simultaneous post-grant proceedings before the Patent Trial and Appeal Board
  • Researched and analyzed complex legal topics related to patent law, design patents, and Board procedure to inform arguments.
  • Drafted court briefs and other persuasive filings
  • Managed the collaboration for the creation of expert witness declarations
  • Created demonstrative evidence and prepared witnesses for deposition and trial proceedings
  • Provide support for oral argument and deposition proceedings
• Part of a team representing a Fortune 500 company in appealing adverse Patent Trial and Appeal Board results to the Court of Appeals for the Federal Circuit
  • Research and analyze complex legal topics to inform arguments
  • Collaborate to draft appeal briefs and other filings
  • Participate in preparation for oral argument
  • Organize procedural rule, timing, and strategy
• Part of a team representing a Fortune 500 company in defensive design patent litigation in the Central District of California
  • Invalidity contentions crafting primarily based on prior art including claim charting, graphic creation, and physical sample procurement from U.S. and foreign markets.
  • Research and analyze complex legal topics leading to favorable settlement resolution for client.
• Part of a team representing a Fortune 500 company in defensive utility patent litigation in the Western District of Texas
  • Researched and analyzed complex legal topics related to patent eligible subject matter, inequitable conduct, infringement pleading standards, motion practice and technical areas related to wireless communication and programming.
  • Organized procedural rule, timing, and strategy
  • Drafted and collaborated memoranda in support of motion to dismiss.
• Part of a team representing a Fortune 500 company in declaratory judgment litigation in the Northern District of Illinois
  • Research and analyze complex legal matters to inform arguments
  • Participate in motion practice successfully defeating adverse motion to dismiss.
  • Participate in drafting pleadings
  • Participate in drafting discovery requests and e-discovery review, including organizing thousands of documents
  • Participate in the creation of extensive invalidity contentions including challenges based on prior art, public disclosure, and indefiniteness including graphic and argument creation.
  • Collaborate for the drafting of expert witness evidence
• Participate in extensive prior art search efforts including for several of the above-listed matters
  • Reviewed prosecution history and other United States Patent and Trademark Office resources
  • Reviewed online resources
  • Reviewed physical media and searched for additional sources
• Represent several independent entrepreneurs, inventors, artists, and other creatives in managing and enforcing their intellectual property allowing them to receive fair compensation for their creations.

AFFILIATIONS

J. Reuben Clark Law Society, Board Member in Charge of Membership

COURT ADMISSIONS

Illinois
Court of Appeals for the Federal Circuit
Northern District of Illinois
Western District of Texas (Pro Hac Vice)
Central District of California (Pro Hac Vice)

PRIOR EXPERIENCE

Andy worked as a summer associate and law clerk for Irwin IP prior to his graduation from Arizona State University’s Sandra Day O’Connor College of Law.  While in school Andy served as President of the Intellectual Property Student Association, President of the J. Reuben Clark Law Society, and was distinguished as a Pedrick Scholar for academic excellence.

 Andy supplemented his legal education with work experience as:

• a legal intern at the Translational Genomics Institute (TGEN), in Phoenix, Arizona, where he participated in procurement efforts for patents on biotechnology and pharmaceutical inventions—researching claim, amendment, and declaration strategies, revising domestic and international patent applications, and drafting responses to office action;
• a student attorney in the Lisa Foundation Patent and Trademark Clinic, where he practiced with a provisional registration number before the USPTO– drafting utility patent applications for the Barrow Neurological Institute’s medical devices, representing independent inventors for utility and design patent procurement, responding to office actions, and conducting examiner interviews; and 
• a legal extern for the Florence Immigrant and Refugee Rights Project (FIRRP) where he advocated for and counseled refugee children and adolescents separated from their families during the ongoing border crisis.

Prior to beginning law school, Andy earned his undergraduate degree in Bioinformatics from Brigham Young University in Provo, Utah and worked in Bioinformatics and Variant Classification Science at the Center for Genomic Interpretation in Salt Lake City, Utah.

SPEAKING ENGAGEMENTS

Presented an educational seminar on intellectual property considerations to inventors, companies, and other toy and game industry professionals at the 2022 People of Play Conference in Chicago, Illinois.

Regularly teach a Spanish-language class on intellectual property to the cohort of Sunshine Enterprises composed of Latin entrepreneurs in the Chicagoland area and nearby Midwest.

LANGUAGES

English (native or bilingual proficiency)
Spanish (native or bilingual proficiency)