Kari Barnes

Kari Barnes

Shareholder

Expertise

  • Intellectual Property Law
  • Cybersecurity Law
  • Privacy & Data Security Law

WSG Practice Industries

Activity

WSG Leadership

WSG Coronavirus Task Force Group
Member

Buchalter
California, U.S.A.

Profile

Kari Barnes has over 15 years of experience in complex intellectual property matters. She advises clients on a broad range of Intellectual Property prosecution and associated transactional endeavors. She also assists in the defense and enforcement of Intellectual Property assets to protect market share and monetize IP portfolios. Ms. Barnes is proficient in domestic and international patent prosecution for a wide variety of technologies, including electronic devices, computer hardware and software, aerospace, and medical devices.

Ms. Barnes currently advises a number of technology companies around the Alice decision—a Supreme Court case ruling a software method unpatentable as an abstract idea. Her experience in technology patent prosecution includes identifying users on a network, propensity assessments based on user activities, data transfer through storage area networks, devices and methods for secure remote access, data encryption and transfer, authentication methods and algorithms, statistical assessments for medical analysis based on historical data sets, devices and signal processing for long range communication systems, electronic hardware accessories for mobile and computer devices, user interface hardware and software for controlling mobile devices, and devices and methods for augmented or virtual reality systems including distortion correction, personalization detection and calibration.

Ms. Barnes has extensive experience assisting aerospace, medical device, and other companies and the unique needs of these companies as they work with the government under government contracts. The intellectual property requirements and obligations change under many of the regulations defining government contract terms, and Ms. Barnes has extensive experience guiding and counseling clients through these complex regulations. She has participated on a number of government sponsored programs supporting recipients of the Small Business Innovative Research grants, and has lectured groups, and counseled clients on how to maintain and maximize intellectual property rights in view of these regulations. Ms. Barnes has counseled aerospace companies including light weight space inflatables, self-navigating aircraft, drones, and long range communication systems under the SBIR grants of the DoD, NASA, MDA, and JPL, and medical device companies including in field diagnostic and medical devices under the SBIR grants of the army, DoD, and NIH.

Ms. Barnes currently advises a large international medical device company on its intellectual property strategy, including creating and maintaining a foreign and domestic patent portfolio; offensive and defensive opinions regarding infringement, freedom to operate, and patentability; as well as assessing the intellectual property assets of potential acquisitions. She has prosecuted a large number of patents protecting stents, catheters, catheter placement systems, needle safety devices, ultrasound devices, urological slings, and other implants and delivery systems. She also advises a number of mid-sized and smaller medical device companies in their intellectual property portfolio strategy and implementation.

She counsels large companies on a cost effective strategy to maintain protection on a large market share, while balancing the cost of a large portfolio. She counsels small businesses and start-ups on intellectual property strategy and portfolio planning to protect an emerging market share or to retain and maximize intellectual property rights in view of joint venture research and development, and government grants.

Prior to joining Buchalter, Ms. Barnes was an attorney at Rutan & Tucker, LLP and Morrison Foerster, litigating and prosecuting patents for large companies involving toys, storage area networks, medical devices, DVD technologies, cell phones, and computer hardware interfaces, including touch screens. Prior to law school, Ms. Barnes instructed at the Colorado School of Mines’ Physics Department. As an adjunct professor, she taught undergraduate physics courses in mechanics and electromagnetism. She was also a researcher at the National Institute of Standards and Technology in the opto-electronics department.

Bar Admissions

  • California
  • U.S. Patent and Trademark Office

Education

  • Loyola Law School
  • Colorado School of Mines
Areas of Practice

Cybersecurity Law | Intellectual Property Law | Privacy & Data Security Law

Professional Career

Significant Accomplishments

IP Prosecution

  • Prosecuted domestic portfolio of an international medical device division focused on surgical and interventional devices for peripheral vascular patency.
  • Prosecuted domestic and international portfolios of different divisions of an international medical device company focused on surgical and interventional devices for peripheral vascular patency, vascular access devices, and urological disorders.
  • Prosecuted the domestic portfolio covering software and hardware applications of an international smart phone company.
  • Prosecuted the domestic and international portfolios of a NASDAQ traded company covering smart networking and communications solutions for machine-to-machine applications.
  • Prosecuted the domestic portfolio of a national hardware and software company focused on network connectivity, monitoring and management that supports enterprise, cloud, government, and telecommunications.
  • Prosecuted the domestic and international portfolios of a middle-sized aerospace company recognized for light-weight space inflatables.
  • Prosecuted the domestic and international portfolios for a middle-sized company specializing in the design and development of advanced photonics systems for military and commercial customers.
  • Prosecuted the domestic and international portfolios of start-up companies in the medical device and diagnostic, software, clean energy, and recycling and mobile industries.

IP Diligence

  • Assisted different divisions of an international medical device company in the IP diligence associated with its acquisitions of a number of technologies and products, including ultrasound devices and applications, ECG signal processing, incontinence devices, catheter access systems, balloon catheters and associated manufacturing methods, and stent placement devices.
  • Performed Freedom to Operate analysis on new technologies and potential product lines of an international medical device company including in vivo device location methods and systems, ultrasound products and accessories, ECG applications, stents, balloon catheters and ports.
  • Performed Freedom to Operate analysis on technologies of start-up companies, including medical device imaging systems, medical diagnostic systems and methods, locker systems, beverage dispensers, clean energy processes, recycling processes including pyrolysis, and software applications.
  • Counsel small businesses and start-ups on IP concerns and best practices to prepare for diligence associated with the desired exit strategy.

IP Litigation

  • Represented a number of joint defendants selling a cosmetic dermabrasion device in defense of a patent suit by a patent troll.
  • Represented a dental curing light distributor in defense of a patent suit by a competitor.
  • Counseled an oil and gas sensor company on monetizing and enforcing patent portfolio against competitors.
  • Represented a global leader in providing access control and secure identity solutions including smart cards, readers, printers, RFID tags and software in patent litigation both as plaintiff and defendant.
  • Counselled software and technology companies in defense of patent suits.
  • Represented an international toy maker in patent defense.
  • Represented a DVD technology company, and associated DVD consortium, in defense of patent infringement suit.

Articles

  • Windfalls and Pitfalls of Pivoting Your Business Model in the New Business Environment
  • Buchalter Client Alert COVID-19: COVID-19 and Intellectual Property Law – UPDATED
  • Buchalter Client Alert COVID-19: Covid-19 and Intellectual Property Law
  • A Sticky Subject: Kari Barnes and J. Rick Taché Explain Why 3D Printing Will Need New Strategies To Protect Innovation
  • If You Conduct Any Business with Entities (Including Affiliates) Outside of the U.S., Then Please Read
  • Are You Allowed to Jailbreak Your Car? As of October 28, the Answer is Yes
  • Intellectual Property Overview For Agribusiness
  • The Price of Free Money
  • Congress Passes Landmark IP Legislation: Defend Trade Secrets Act
  • Many Nonpracticing Entities Get a Bad Rap With ‘Troll’ Label
  • Alice is Unanimous – The Latest on Software and Business Methods Patents from the U.S. Supreme Court
  • A Word To The Wise – You Don’t Own it Just By Inventing It
  • American Invents Act – Now What?