Barry Shelton

Office: (512) 263-2165, Cell: (512) 517-9998

Barry Shelton is a co-founder of Shelton Coburn. His legal career started in 1999 at Wireless Knowledge, a joint venture between Microsoft and Qualcomm, during the dot-com boom. He had engineering, management and legal roles at Wireless Knowledge, including Vice President of Operations, Intellectual Property Counsel and acting General Counsel. He is a named inventor on three U.S. patents covering inventions he co-developed while at Wireless Knowledge and three U.S. patents on authentication issued since 2016.

In 2001, Barry entered private practice at Gray Cary Ware & Freidenrich LLP (now DLA Piper), focusing on patent litigation. He was a partner in large international law firms, including Fish & Richardson P.C., Bracewell & Giuliani LLP (co-chair of IP Litigation), Pillsbury Winthrop Shaw Pittman LLP, where he was the head of the Intellectual Property group for the Austin office, and most recently Winston & Strawn LLP.

Over his twenty-six year career, Barry has handled hundreds of patent matters and tried cases in district courts across the United States and before the U.S. International Trade Commission. He has argued appeals before the Court of Appeals for the Federal Circuit. He has also litigated trade secret cases and tried a trade secret misappropriation case to verdict in Texas state court.

Mr. Shelton has served as lead counsel in cases across all disciplines of electrical engineering, focusing on processor and computer architecture, software, networks and communication protocols, and semiconductors. In addition, he is a registered patent attorney, and has prosecuted patents, performed due-diligence analysis of patent portfolios, authored non-infringement, invalidity and freedom to operate opinions, and performed patent assertion and targeting analysis for operating companies.

Prior to becoming a lawyer, Barry was the president and founder of Performance Consulting Group, LLC, a technical instructor at Vortex Data Systems and an electronics engineer for the U.S. Navy at the Naval Aviation Depot in San Diego, California. During law school he held every Microsoft and Novell certification and was a Cisco CCNA.

Education

J.D., University of San Diego School of Law, 1998, The Order of Barristers
M.S., Electrical Engineering, San Diego State University, 1994
B.S., Chapman University, 1990

Admissions

State of Texas; U.S. District Court for the Northern, Southern, Eastern, and Western Districts of Texas
State of California; U.S. District Court for the Northern, Southern, Central and Eastern Districts of California
State of Washington; U.S. District Court for the Western District of Washington
U.S. District Court for the Northern District of Illinois (General and Trial Bars)
U.S. Courts of Appeals for Veterans Claims and the 5th, 9th and Federal Circuits
United States Patent and Trademark Office, Reg. No. 43,113

Honors & Awards

IAM Patent 1000 (2015-2018, 2023, 2024)
Super Lawyers – Texas (2016-2021)
The Best Lawyers in America, Litigation - Intellectual Property (2017-2019, 2024)
The Legal 500 US, recognized as a "Key Lawyer" in Patent Litigation (2023)

Other Professional Licensure

Registered Professional Engineer, Electrical Engineering (California)

Section 337 Proceedings before the U.S. International Trade Commission

Certain Capacitive Touch-Controlled Mobile Devices, Computers, and Components Thereof (Investigation No. 337-TA-1193) – Represented Respondent Microsoft Corporation in ITC investigation regarding touch screen controllers.
Certain Touch-Controlled Mobile Devices, Computers, and Components Thereof (Investigation No. 337-TA-1162) – Represented Respondents Microsoft Corporation and HP Inc. in ITC investigation regarding touch screen controllers.
Certain Air Mattress Systems, Components Thereof, and Methods of Using the Same (Investigation No. 337-TA-971) – Represented Complainants Select Comfort Corporation and Select Comfort SC Corporation in ITC investigation involving inflatable mattress systems.
Certain Integrated Circuits, Chipsets, and Products Containing Same Including Televisions (Investigation No. 337-TA-822) – Represented Complainant Freescale Semiconductor, Inc. in ITC investigation regarding integrated circuits.
Certain Integrated Circuits, Chipsets, and Products Containing Same Including Televisions (Investigation No. 337-TA-786) – Represented Complainant Freescale Semiconductor, Inc. in ITC investigation regarding integrated circuits.
Certain Integrated Circuits, Chipsets, and Products Containing Same Including Televisions, Media Players, and Cameras (Investigation No. 337-TA-709) – Represented Complainant Freescale Semiconductor, Inc. in ITC investigation regarding integrated circuits.
Certain Probe Card Assemblies, Components Thereof and Certain Tested DRAM and NAND Flash Memory Devices and Products Containing Same (Investigation No. 337-TA-621) – Represented Respondent Micronics Japan Co., Ltd. against complainant FormFactor, Inc., obtained final determination of no violation.
Certain Audio Processing Integrated Circuits and Products Containing Same (Investigation No. 337-TA-538) – Represented Complainant SigmaTel, Inc. against Actions Semiconductor Co., Ltd. in ITC investigation involving integrated circuits for MP3 players.
Certain Network Controllers and Products Containing Same (Investigation No. 337-TA-531) – Represented Complainant Marvell International, Ltd. against Realtek Semiconductor Corp. in ITC investigation regarding Gigabit Ethernet controllers.
Certain Personal Computers, Server Computers, and Components Thereof (Investigation No. 337-TA-509) – Represented Complainant Hewlett-Packard Company against Gateway, Inc. in ITC investigation involving desktop, notebook, and server computers.
Certain Audio Digital-to-Analog Converters and Products Containing Same (Investigation No. 337-TA-499) – Represented Complainant Cirrus Logic, Inc. in ITC investigation involving audio digital-to-audio converters. Obtained final determination of section 337 violation.
Certain Power Amplifier Chips, Broadband Tuner Chips, and Products Containing Same (Investigation No. 337-TA-490) – Obtained final determination of noninfringement and invalidity for Respondent Microtune, Inc. in ITC investigation involving ESD protection for integrated circuits.

District Court Actions

Modulus Financial Engineering, Inc. v. NVIDIA Corp. (W.D. Tex. 2024) – Defend GPU manufacturer, NVIDIA, against trademark infringement claims
AX Wireless LLC v. HP Inc. (E.D. Tex. 2022) – Defend electronics manufacturer, HP, in patent infringement suit
WSOU Investments LLC v. Dell Inc., et al. (W.D. Tex. 2020) – Defend electronics manufacturer, Dell and VMware, against patent infringement claims
TurboCode LLC v. HP, Inc. (W.D. Tex. 2021) – Defend electronics manufacturer, HP, in patent infringement suit
paSafeShare LLC v. Microsoft Corp. (W.D. Tex. 2020) – Defend technology company, Microsoft, in patent infringement suit
Ocean Semiconductor LLC v. NXP USA, Inc. (W.D. Tex. 2020) – Defend semiconductor manufacturer, NXP, against patent infringement claims
Caddo Systems, Inc. v. NXP USA, Inc. (W.D. Tex. 2020) – Defend semiconductor manufacturer, NXP, against patent infringement claims
Far North Patents, LLC v. NXP USA, Inc. (W.D. Tex. 2020) – Defend semiconductor manufacturer, NXP, against patent infringement claims
PayPal Inc. v. RetailMeNot Inc. (W.D. Tex. 2020) – Defend online retail technology company, RetailMeNot, against patent infringement claims
Freshub, Inc., et al v. Amazon.Com Inc., et al. (W.D. Tex. 2019) – Defend online retailer, Amazon, in patent infringement suit
Bell Semiconductor LLC v. NXP USA, Inc. (W.D. Tex. 2019) – Defend semiconductor manufacturer, NXP, against patent infringement claims
Vantage Micro LLC v. NXP USA, Inc. (W.D. Tex. 2019) – Defend semiconductor manufacturer, NXP, against patent infringement claims
IYM Technologies LLC v. Advanced Micro Devices, Inc. - Represented defendant in case relating to method for designing integrated circuits in District of Delaware
Goodman v. Hewlett-Packard Company - Lead counsel for defendant in case involving computer memory in Southern District of Texas, case found to be exceptional after summary judgment of non-infringement granted
Iris Connex LLC v. Hewlett-Packard Company - Lead counsel for defendant in case relating to smartphone cameras in Eastern District of Texas (summary judgment of non-infringement granted after early Markman hearing)
Hewlett-Packard Company v. Sockeye Licensing TX, LLC - Lead counsel for declaratory judgment plaintiff in case relating to Wi-Fi Direct in Northern District of Illinois
Nextpoint, Inc. v. Hewlett-Packard Company - Lead counsel for defendant in competitor case involving method for organizing trial information in Northern District of Illinois (defendant's motion to dismiss due to patent ineligibility granted, summarily affirmed by Federal Circuit)
Cyva Research Holdings, LLC v. Hewlett-Packard Company - Lead counsel for defendant in case involving secure data transfer in Eastern District of Texas (plaintiff voluntarily dismissed)
DataMotion Texas LLC v. Hewlett-Packard Company - Lead counsel for defendant in competitor case relating to encrypted e-mail in Eastern District of Texas (case resolved shortly after motions for transfer to Northern District of California granted)
In re Innovatio IP Ventures, LLC Patent Litigation – Lead counsel for Hewlett-Packard and its customers in a twenty-three patent case accusing all products with Wi-Fi network interfaces, only the second case in the country in which Reasonable and Non-Discriminatory (RAND) royalty rates were determined by the district court, in Northern District of Illinois (resolved after two bench trials established the RAND royalty rate)
Microsoft Corporation v. Commonwealth Scientific and Industrial Research Organization - Represented plaintiff in patent declaratory judgment action involving IEEE 802.11a/g wireless LAN devices in Eastern District of Texas. Defeated CSIRO’s motion to dismiss based on sovereign immunity and argued interlocutory appeal on issue of first impression, affirmed by Federal Circuit (Opinions 06-1032 and 06-1040)

Personal

Instrument-rated commercial pilot (helicopters) and private pilot (airplane single-engine land)