Partner
Houston, Texas Area
IP Counseling: prepared non-infringement and invalidity opinions, Ex Parte Reexamination requests, and requests for Inter Partes Review; counseled clients on patent design-around strategies and the strength of patents in anticipation of litigation; developed and implemented global patent prosecution strategies for patent families; drafted and negotiated licenses as well as terms of service for web-based applications; conducted IP due diligence as part of M&A transactions; advised clients on IP issues related to SEC filings, the value of various IP assets, copyright registration and enforcement issues, as well as trademark registration, opposition, and enforcement issues.Licensing: reviewed and drafted licenses; advised clients on software development agreements, open source software issues, and enforcement of licenses.Patent Prosecution: prepared and successfully prosecuted more than 500 U.S. patent applications in a wide variety of fields, including web-based applications, graphical user interfaces, information security, financial management systems, file systems, operating systems, compilers, networking, resource management, distributed systems, social networks, consumer devices, and medical devices; successfully appealed numerous patent applications before the U.S. Patent Office Board of Patent Appeals and Interferences; developed and implemented global patent procurement strategies.IP Litigation: prepared complaints, answers, motions, and responses to discovery; conducted and participated in depositions, mediations, hearings, and trials for various copyright and patent infringement lawsuits.
