Concentration

Intellectual property transactions and counseling; patent, trade secret and copyright litigation

Summary

Mitchell Lukin's practice centers on transactions, client counseling and litigation in intellectual property and technology-related matters. He has broad experience in intellectual property management and has handled a wide variety of corporate transactions focusing on technology transfers and intellectual property rights. Mr. Lukin counsels clients on general issues related to intellectual property protection and enforcement, including implementing and evaluating protection programs, avoiding litigation and obtaining maximum value from assets.

Mr. Lukin also represents clients in patent, copyright, and trade secret disputes in federal courts in Texas and across the country. He works with a wide range of technologies, including process industry technology, gas-to-liquids processing, clean and alternative energy, smart grid technology, computers and displays, semiconductor and electronic devices, database and financial services software and systems, oilfield equipment and services, medical devices and biotechnology.

Mr. Lukin is a frequent speaker on patent and copyright law, addressing such topics as patent infringement, software licensing, business methods patents, ethical issues and copyright litigation.

Representative Engagements

Counseling and Transactions

• Electric utility – intellectual property and technology transactions, including smart grid development agreements
• Energy service provider – intellectual property counseling, licensing and litigation
• Independent oil company – acquisition and development agreements for gas processing technology
• Major chemical company – diligence and licensing for acquisition of major chemical line
• Medical device provider – intellectual property and technology diligence, licensing and development agreements
• Multiple industries – software development and licensing transactions
• Oilfield Service Company– intellectual property and technology counseling and management; technology diligence; international inbound and outbound licensing
• Various cable television companies – intellectual property counseling, licensing and litigation
• Waste industry – licensing associated with alternative energy technology joint development program

Litigation

• Electronic Trading Systems and eSpeed, Inc. v. The Board of Trade of the City of Chicago and The Chicago Mercantile Exchange (Northern District of Texas) Baker Botts represented plaintiffs in infringement litigation involving a business method patent related to electronic futures trading exchanges. The case settled for an estimated $30 million following mediation on the eve of trial, and has resulted in other licenses which so far have added over $10 million in additional royalties.
• Imonex Services v. W.H. Münzprüfer (Eastern District of Texas) Baker Botts represented W.H. Münzprüfer on appeal in patent litigation concerning coin acceptors for vending and laundry machines. At trial, Baker Botts successfully reduced a damage claim from nearly $100 million to less than two million dollars. This result was affirmed on appeal at the Federal Circuit.
• In re Certain Home Vacuum Packaging Products (USITC) Baker Botts represented Applica (which includes the consumer products business of Black & Decker) in the International Trade Commission in a case relating to home vacuum packaging appliances. The complainant, Tilia Inc., sought a temporary exclusion order among other relief. Baker Botts won the temporary relief proceeding, and the case settled on favorable terms shortly before the permanent relief trial.
• Intellectual Property Development v. Telecommunications Inc. (AT&T Broadband) (Southern District of New York) Baker Botts successfully defended TCI and over fifty related companies in separate actions (multidistrict litigation) in a patent infringement suit involving hybrid fiber co-ax cable television systems. Plaintiffs were seeking over $100 million in damages. Baker Botts obtained summary judgment on behalf of TCI holding the patent invalid and not infringed, and the Federal Circuit affirmed on noninfringement grounds in 2003.
• Lans v. Dell Computer Corporation and Uniboard v. Dell Computer Corporation (District Court for the District of Columbia) Baker Botts represented Dell in two related cases involving display technology, and succeeded in having motions granted dismissing both cases. Both dismissals were affirmed on appeal, and an award of attorney fees ordered.
• Kinetic Concepts Inc. (KCI) v. Bluesky Inc., Medela AG, et al. (Western District of Texas) In this case, Baker Botts represented defendant Medela in a patent infringement, breach of contract, and miscellaneous state tort claims case. After substantial discovery, a Markman hearing and substantial motion practice, a seven-week jury trial, and six days of jury deliberation, we obtained a defense verdict on all claims against our client. Final judgment was entered in our client's favor in early 2007, and affirmed on appeal.
• Kinetic Concepts Inc. (KCI) v. Medela AG, et al. (Eastern District of Texas) Baker Botts represents Medela in a second patent infringement action brought by KCI involving wound healing patents. A motion to transfer to the Western District of Texas was granted, and the case now is in its early stages.

Publications, Speeches and Presentations

• "Patent Infringement," Intellectual Property Survey for the General Lawyer, University of Houston Law Foundation, Houston and Dallas, 2000, 2001, 2007, 2008
• "Protecting Your Intellectual Property," Rice Alliance for Technology and Entrepreneurship Workshop, Houston, October 2004
• "Copyright Law, Trade Secrets, Privileged Information, and Confidentiality Issues," American Association of Legal Nurse Consultants, Houston, October 2004
• Moderator, "Ethical and Litigation Issues Surrounding Opinion Letters of Counsel in Intellectual Property Disputes," American Bar Association Section of Litigation, Intellectual Property Litigation Committee, Houston, May 2004
• "Basic Valuation," Licensing Executives Society, Lake Las Vegas, February 2002
• "Intellectual Property for Emerging IT Enterprises," Houston Technology Center, Houston, February 2000
• Moderator, "Business Methods Patents," American Bar Association Section of Litigation, Intellectual Property Litigation Committee, Houston, January 2000
• "Does This Belong to You?" Copyright Litigation Nuts and Bolts, Intellectual Property Institute, Houston Bar Association, Houston, September 1999