Concentration

Patent litigation with strong background in licensing and the development of intellectual property portfolios

Summary

Doug Kubehl's practice focuses on complex patent litigation. Mr. Kubehl has litigated patent suits before numerous United States District Courts and before the United States Court of Appeals for the Federal Circuit. In addition to his work in United States Courts, Mr. Kubehl has managed patent infringement claims in courts throughout Europe.

Mr. Kubehl has first-chaired and second-chaired lawsuits involving a variety of technologies, including electronics, telecommunications services, Internet technologies, wireless and wireline networking equipment and software, computer hardware and software, semiconductors and optical systems and components. In several cases, Mr. Kubehl has obtained findings of noninfringement and invalidity as a matter of law, resulting in efficient case resolutions without the need for a trial. Where trial has been necessary, Mr. Kubehl has successfully enforced and defended his clients' rights. Importantly, Mr. Kubehl has deep experience in negotiating complex technology agreements. This experience is invaluable when settling infringement suits on terms most favorable to our clients.

Outside of the courtroom, Mr. Kubehl is a registered patent attorney with degrees in Electrical and Computer Engineering. Mr. Kubehl has considerable experience in the valuation and strategic development of IP portfolios. This experience, along with his work in evaluating and negotiating patent license agreements, gives Mr. Kubehl a broad perspective that facilitates the best possible resolutions to our clients' multi-faceted needs.

Representative Engagements

• National telecommunications service provider – defense of patent infringement claim involving messaging resulting in summary judgment of noninfringement
• National computer manufacturer – defense of patent infringement case involving computer touch screens resulting in stipulation of noninfringement by plaintiff
• Multinational telecommunications equipment provider – defense of patent infringement case involving computer remote control software resulting in summary judgment of noninfringement
• National call center software company – defense of a patent infringement claim asserted by a competitor on a patent involving telecommunications software resulting in summary judgment of noninfringement
• National educational software company – defense of a patent infringement claim involving educational software resulting in settlement immediately after favorable claim construction ruling
• National defense contractor – defense of a patent infringement claim involving optical components resulting in settlement immediately after favorable Markman hearing
• National defense contractor – assertion of patents related to construction equipment resulting in multi-million dollar damages award after two week trial
• Multinational Internet security company – defense of patent infringement claim involving database encryption
• Multinational Internet security company – defense of patent infringement claim involving email scanning
• Multinational telecommunications equipment provider – defense of patent infringement case involving data streaming
• National sales lead management service provider – defense of patent infringement case involving sales of leads on credit products
• Multinational telecommunications equipment provider – defense of patent infringement case involving Femtocell technology
• Multinational telecommunications equipment provider – defense of patent infringement case involving Internet encryption technology
• National telecommunications equipment provider – defense of patent infringement case involving Voice Over IP Gateway technology
• Multinational telecommunications equipment provider – defense of a patent infringement case involving Internet routing and wireless communication
• National telecommunications service provider – defense of patent infringement claim involving anti-fraud measures for cellular phones
• Multinational wireless services provider – defense of multiple patent infringement cases involving wireless communications Multinational wireless services provider – defense of multiple patent infringement cases involving wireless communications
• Multinational computer, electronics, and network equipment provider – defense of a patent infringement claim relating to plasma display technology
• Large semiconductor manufacturer – arbitration in the International Chamber of Commerce (ICC) involving defense of a patent infringement claim over semiconductor manufacturing process and devices
• Large electronics company – enforcing client's patent against competitor, resulting in a multimillion-dollar judgment in favor of the company following a two-week trial
• National sales lead management service provider – defense of patent infringement case involving lead management software and webpage design
• National educational software provider – defense of patent infringement case involving interactive educational software
• Educational software company – patent infringement suit against a competitor that resulted in settlement
• Telecommunications equipment provider – multibillion-dollar antitrust suit involving telecommunications switching hardware and software
• Telecommunications service provider – technical contract dispute involving telecommunications switching software
• Telecommunications equipment provider – suit for patent infringement and trade secret misappropriation
• $100 million optical networking company – development and management of an extensive patent portfolio

Publications, Speeches and Presentations

• "The America Invents Act and its Impact on Patent Litigation," Association of Corporate Counsel, Dallas, December, 2011
• "Managing Costs of Patent Litigation," Baker Botts IP Seminar, Dallas, 2011
• "How Far does the Infringement Net Stretch? - Limitations on Claiming Infringement," Baker Botts IP Seminar, Dallas, 2009
• "Microsoft v. AT&T: Questions the Supreme Court Did Not Answer," Baker Botts IP Seminar, Dallas, 2007
• "Litigating International Infringement Claims in U.S. Courts After Microsoft v. AT&T," IP Law & Business Spring IP Briefing, San Jose, California, 2007
• "Defending Patent Suits Brought by Nonpracticing Entities," Baker Botts IP Seminar, San Jose, California, and Herndon, New Jersey, 2007
• "Negotiating and Enforcing IP Indemnity Provisions," Baker Botts IP Seminar, San Jose, California, and Herndon, New Jersey, 2007
• "Strategies in Using Community of Interest Agreements in Patent Litigation," Baker Botts IP Seminar, San Jose, California, 2006
• "Managing Indemnity Obligations," Baker Botts IP Seminar, San Jose, California, 2006
• "IP Portfolio Analysis and Valuation," Baker Botts IP Audit Seminars, Dallas, 2002 and 2003
• "Strategic Development and Maintenance of Your Patent Portfolio," Baker Botts Portfolio Development Seminars, Dallas and San Jose, California, 2001, 2002 and 2003
• "Document Retention and Trade Secret Policies," Baker Botts Trade Secret Seminar, Dallas, 2003
• "Prefiling Strategies in Patent Infringement Litigation," Baker Botts Training Seminar, Dallas, Summer 2002
• "Damages in Patent Infringement Litigation," Baker Botts Training Seminar, Dallas, Spring 2002
• "Strategic Protection of Technology Through Patents and Trade Secrets," North Dallas Chamber of Commerce Intellectual Property Seminar, Dallas, June 2001