Warren S. Wolfeld
Warren’s clients include both large and small domestic and global businesses seeking to manage, own and fortify patents and patent portfolios. Warren is dedicated to safeguarding even the most complex technologies. In his third decade of practice, Warren strives to serve each client’s best interest by focusing on maximizing their opportunities and identifying and navigating beyond inherent threats and obstacles. Because Warren is able to delve deeply into new technologies, he can quickly comprehend and effectively prosecute even the most complicated and cutting-edge innovations of today. Warren is frequently complimented on his grasp of new technologies.
Warren espouses a market-driven approach to patent drafting, seeking to capture the market segment that the invention addresses. He believes that the best patents often are ones that ensure that only his client is able to make a marketing claim that is of value to customers. He is appreciated for executing precision and high-quality legal counsel both on time and on budget, and his direct communication style and vigilance for his clients’ interests have created relationships of trust with many clients over the years.
Warren is truly dedicated to serving as a trusted advisor and strategic partner, and is known not only for his legal and technical prowess, but also for his often fresh perspective and out-of-the-box thinking when navigating beyond obstacles and solving the problems his clients regularly encounter. Warren’s patent litigation experience early in his career distinguishes him from other patent practitioners, and has helped him to prepare and prosecute patent applications that have successfully survived punishing litigation and brought significant rewards for his clients.
Warren is involved in analyzing, drafting and prosecuting patents and patent applications, as well as in strategic portfolio management, rendering opinions, assisting in design-around efforts, and conducting due diligence studies. He advises clients in a variety of electrical and electronics-related fields, a sampling of which includes computer architectures, telecommunications hardware and software, semiconductor design, digital signal processing, microwave test instruments, discrete and integrated electronic circuitry, integrated optics, flat panel display technologies, computer software and object- and agent-oriented design, database software, speech and language processing, computer aided semiconductor design tools, superconducting electronics, neural networks, and image and video compression.
Warren is distinguished by Martindale-Hubbell as AV Preeminent. He holds a B.S. in Electrical Engineering, Magna Cum Laude, from the University of Rochester, as well as a J.D. from Cornell Law School, where he was Senior Editor of the Cornell International Law Journal. Warren is admitted to practice in both California and New York, as well as before the U.S. Patent and Trademark Office, the Court of Appeals for the Federal Circuit, U.S. District Courts for the Southern and Eastern Districts of New York, and the U.S. District Court for the Northern District of California. Warren is a member of Tau Beta Pi, IEEE, the American Bar Association, American Intellectual Property Law Association, and the San Mateo County Bar Association.
Prior to joining HBW as a Partner in 2001, Warren served as a Partner at Fliesler, Dubb, Meyer & Lovejoy LLP in San Francisco, and before that as an Associate at Kenyon & Kenyon in New York. In addition, Warren authored “International Patent Cooperation: The Next Step,” published in the Cornell International Law Journal as a study of the international patent system, which was also reprinted in the Modern Legal Systems Cyclopedia and in Intellectual Property Policy and International Negotiation.
Areas of Practice
- Intellectual Property
- 20% of Practice Devoted to Litigation
Certified Legal Specialties
- Registered Patent Attorney, United States Patent and Trademark Office
- California, 1987
- New York, 1984
- U.S. Court of Appeals Federal Circuit, 1984
- U.S. District Court Southern District of New York, 1984
- U.S. District Court Eastern District of New York
- U.S. District Court Northern District of California
- U.S. Patent and Trademark Office, 1984
- Cornell Law School, Ithaca, New York
- J.D. – 1983
- Law Journal: Cornell International Law Journal, Senior Editor
- University of Rochester, Rochester, New York
- B.S.E.E., Bachelor of Science Electrical Engineering magna cum laude – 1980
- International Patent Cooperation: The Next Step, 16 Cornell International Law Journal 229, (1983) (a study of the present and future international patent system), reprinted in 4 K. Redden, Modern Legal Systems Cyclopedia 639 (1984), and in 1 B. Dameron, Intellectual Property Policy and International Negotiation 305 (1987)
- Boots Laboratories, Inc. v. Burroughs Wellcome Co. v. Boots Company , Inc., Boots Holdings, Inc., Boots Pharmaceuticals, Inc., 1984 WL 15504 (E.D.Va. 1984)
- Advanced Micro Devices, Inc. vs. Samsung Semiconductor, Gazelle Microelectronics, Atmel Corporation and Cypress Semiconductor
- Wiltron Co. vs. Hewlett-Packard Co.
- Tandy Corporation vs. Adaptec Inc.
- In re: Certain Dynamic Random Access Memories (U.S. International Trade Commission action, Texas Instruments vs. eight DRAM manufacturers)
Honors and Awards
- Martindale-Hubbell of AV-Preeminent
Professional Associations and Memberships
- IEEE, 1980 – Present
- American Bar Association, 1983 – Present
- American Intellectual Property Law Association, 1983 – Present
- San Mateo County Bar Association
Past Employment Positions
- Fliesler, Dubb, Meyer & Lovejoy LLP, San Francisco, Partner, 1986 – 2001
- Kenyon & Kenyon, New York, Associate, 1983 – 1986
- Tau Beta Pi