Energy Industry

• Defended manufacturer of offshore and subsea production equipment in an action for alleged misappropriation of trade secrets in Harris County District Court. Following a four-week trial, the jury returned a verdict for our client that the allegedly-misappropriated information was not a trade secret, which was affirmed on appeal.
• Represented major oilfield services provider asserting claims for patent infringement in federal court for the Northern District of Texas relating to composite packers, bridge plugs and frac plugs. The jury returned a $34 million verdict in our client’s favor.
• Represented major oilfield drilling company in a patent infringement action in federal court for the Northern District of Texas relating to directional drilling software. After obtaining judgment of non-infringement on 8 patents asserted against our client, we conducted a two-week jury trial on our client’s counterclaims of infringement against the aggressor competitor. The case settled during jury deliberations.
• Defending providers of fuel technology solutions for the energy sectors in a patent infringement action in federal court for the Western District of Texas. In inter partes reviews (IPRs) we filed, the United States Patent Office’s (USPTO) Patent Trial and Appeals Board (PTAB) found all patent claims asserted against our client unpatentable in view of the prior art; those decisions are pending appeal at the Federal Circuit.
• Defending a leading manufacturer of solar modules in a patent infringement action in federal court for the Southern District of Texas involving a patent related to the design of tunnel oxide passivated contact (TOPCon) solar cells.This case is in its early stages.
• Defending a provider of energy and oilfield logistics solutions in a patent infringement action in federal district court in Wyoming involving a patent relating to systems for filling silos with proppant used in well stimulation. In an IPR we filed, the PTAB found all claims of the asserted patent unpatentable over the prior art.
• Strategic advice regarding freedom to operate, employment agreements, and IP licensing agreements for a major oilfield services provider.
• Analyzed IP portfolio and technology relating to hydrogen production for a subsidiary of a global investment firm.
• Defended major energy company in a patent infringement action in federal district court in Delaware involving two patents relating to mercury capture in power plants. This case resulted in a favorable outcome following the PTAB's institution of IPRs on two of the asserted patents.
• Negotiated joint development agreement with a major oil and gas company relating to fiber optic technologies used in oilfield operations.
• Advised a major oilfield services provider in launch of a joint venture developing technology for emissions management.
• Managed a worldwide patent portfolio relating to drilling, well stimulation, and cementing technologies for a major oilfield services provider.
• Negotiated joint development agreement with a university for development of oil treatment chemicals on behalf of a large oil and gas exploration company.
• Built strategic patent portfolio and advised on joint development agreements for a major natural gas company.

Life Sciences Industry

• Defended developer of nucleic acid (RNA and DNA) sequencing technologies in a patent infringement action in federal district court in Delaware. Following a trial in March 2020, the jury returned a favorable verdict on all asserted patents. The district court entered final judgment in our client’s favor, which was affirmed on appeal by the Federal Circuit.
• Defended clinical genetic testing company in a patent infringement action in federal court for the Western District of Texas involving two patents relating to cell-free DNA testing.
• Defended medical research institution in a lawsuit involving patent infringement claims and state law claims in federal court for the Southern District of Texas relating to immuno-cancer therapies. The case resulted in a favorable outcome in its early stages.
• Defended medical device manufacturer in federal court for the Western District of Texas against claims for patent infringement and unfair competition involving vacuum-assisted closure wound treatment technology. Final judgment was entered in our client's favor and was affirmed on appeal.
• Represented public university in a patent inventorship dispute action in federal court for the Northern District of California against a former university graduate student and his company involving nucleic acid sequencing technologies. The case resulted in a favorable outcome before trial.

Consumer Technologies

• Represented major appliance manufacturer in patent infringement actions in federal district courts in Delaware and New Jersey involving refrigerator storage and ice/water dispensing systems. Also handled concurrent reexaminations of asserted patents. In the Delaware action, the client received a favorable jury verdict on both its key patent and on the competitor's patent pursued at trial. These cases subsequently ended with a favorable outcome.
• Defended major HVAC system manufacturer patent suit brought by competitor in federal district court in Delaware involving two patents relating to communication systems for residential HVAC systems. The case ended in a favorable outcome after trial.
• Represented major appliance manufacturer in the International Trade Commission in a patent case involving ice making / dispensing systems for refrigerators, which involved a five-day hearing conducted before an Administrative Law Judge.
• Defended a global insurance services provider and their employee in an action for alleged misappropriation of trade secrets and breach of contract in Montgomery County District Court filed by the employee’s former employer. The case was dismissed prior to any discovery or merits hearing.
• Strategic intellectual property counseling and advice regarding freedom to operate issues, patent opinions, patent disputes, and licensing for a large supermarket chain.
• Freedom to operate analysis, patent opinions, and patent prosecution for a major specialty chemicals manufacturer.