Concentration

Litigating patents, trade secrets and other technology assets for clients in the biomedical, computer, electronics, software and telecommunications fields; development, licensing and related counseling around intellectual property assets to fulfill strategic technology and market objectives

Summary

Chris Kennerly is the head of the intellectual property department in the firm's Palo Alto office. Mr. Kennerly has experience in all areas of IP law and practice, including patent and trade secret litigation, patent portfolio development and management, patent and trademark licensing and comprehensive IP counseling. His experience spans a broad range of technologies in the biomedical, computer, electronics, software and telecom fields.

Mr. Kennerly has been actively involved in litigating and trying high-profile patent and trade secret cases in the Eastern District of Texas, Northern District of Texas, Eastern District of Virginia and other venues. He often "quarterbacks" cases from their filing through resolution, and has a significant role in the courtroom at hearings and trial.

Mr. Kennerly has also counseled established public companies, small start-up companies and individuals on many aspects of IP protection, licensing, risk analysis and dispute resolution. He has helped clients develop robust IP protection programs, resulting in strong patent, trademark, copyright and trade secret assets that protect substantial revenue streams, reduce exposure to IP claims and provide other sources of value.

Mr. Kennerly enjoys being active in the firm and community. He has served in a number of leadership positions in the firm and for civic, bar and charitable organizations.

Representative Engagements

Selected IP Litigation Matters

• Advanced Neuromodulation Systems (E.D. Tex. – Sherman) – patent litigation and trade secret arbitration involving implantable spinal cord stimulation technology; resolved shortly before trial
• Alcatel (Dallas County, Tex.) – trade secret litigation involving Intelligent Network switching, service creation and management and data communications technology; resolved six weeks into trial
• AT&T Corp. (E.D. Tex. – Marshall) – ongoing defense of patent case involving packet-switching, routing and fiber optic technologies
• AT&T Mobility (D. Ariz., E.D. Tex. – Marshall) – patent case directed to prepaid wireless services; resolved shortly before trial
• AT&T Mobility (E.D. Va.) – ongoing defense of patent infringement claims directed to wireless email services; obtained indefinite stay pending the outcome of reexam proceedings
• AT&T Mobility (D. Md.) – ongoing defense of patent infringement litigation involving SMS text messaging technology
• AT&T Mobility (W.D. Wa.) – ongoing defense of patent case involving cellular telephone modem technology
• AT&T Mobility (E.D. Tex.) - ongoing defense of patent infringement claims directed to E-911 and other location-based services
• AT&T Mobility (E.D. Tex.) - patent case involving navigation services; resolved favorably before Markman hearing
• eSpeed (N.D. Tex. – Dallas) – patent infringement case against commodities and options exchanges involving automated futures trading technology; resolved shortly before trial
• Ericsson (D. Ariz.; E.D. Tex. – Marshall) – patent case involving Intelligent Network prepaid wireless systems and services; resolved shortly before trial
• Idearc (E.D. Tex. – Marshall) – patent infringement case involving database and Internet search engine technology; resolved after Markman ruling
• Skechers (E.D. Tex. – Marshall) – defense of patent case involving athletic shoe design; resolved before Markman hearing
• T-Mobile (E.D. Tex. – Marshall) –patent case directed to prepaid wireless systems and services; resolved shortly before trial
• Verizon (E.D. Tex. – Tyler) – patent infringement case involving Internet access technologies, resolved after Markman ruling
• Verizon (N.D. Tex. – Fort Worth) – patent infringement case involving VoIP services, resolved before Markman hearing
• Verizon (E.D. Tex. – Beaumont) – defended patent case involving prepaid calling cards and associated activation technology; resolved during trial
• Verizon Wireless (E.D. Tex. – Marshall) – defense of patent claims involving enhanced telecommunications services accessible via mobile devices; resolved shortly before Markman hearing

Selected Counseling and Transactional Matters

• Advanced Neuromodulation Systems – patent preparation and prosecution, legal opinions, and counseling related to neurostimulation systems; worked to protect IP developed through university and institutional research; facilitated IP due diligence for $1.3 billion acquisition
• i2 Technologies – developing and managing a worldwide patent portfolio directed to supply-chain planning and business-to-business (B2B) collaboration software and associated business methods; patent, trademark and other IP disputes; comprehensive IP counseling
• Liberty Media – managed IP due diligence for $7.9 billion acquisition
• OpinionLab – working with successful start-up company in developing and managing patent portfolio directed to software for collecting and reporting from Internet users; patent, trademark and other IP disputes; comprehensive IP counseling
• Dr. W. Keith Thornton – worked with individual inventor dentist in developing and licensing his worldwide patent portfolio directed to dental devices and oral appliances for treating sleep disorders; handled patent, trademark and other IP disputes, including patent infringement litigation; comprehensive IP counseling
• Tyco Healthcare – conducted IP investigations and IP due diligence review for potential acquisitions

Publications, Speeches and Presentations

Selected Publications

• "A Trip Through the Patent Funhouse: Identifying and Resolving Complex Legal and Business Issues," Inside the Minds: Developing a Patent Strategy, Aspatore Books, 2005

Selected Speeches and Presentations

• "Extraterritorial Patent Enforcement Under Section 271(f)," Advanced Patent Law Institute, Stanford Program in Law, Science &Technology, Berkeley Center for Law & Technology and The University of Texas School of Law, San Jose, 2007
• "Avoiding Potholes on the Road to Exclusivity," American Intellectual Property Association (AIPLA) PPPT Workshop, Washington, D.C., 2004–2006
• "Pre-Filing Patentability Searches: Why, How, and What Then?" American Intellectual Property Law Association (AIPLA) Spring Meeting, Dallas, 2004
• Panel Moderator, "Commercialization of IP Developed Through University Research," Southwest Bio Venture Capital Conference, Houston, 2003
• "Intellectual Property Fundamentals: What Every Innovator Should Know," DeVry University, Dallas, 2002