People

Liz Flannery Photo
Liz Flannery
Partner | Sector Chair - Energy IP (Firmwide) & Department Chair - Intellectual Property (Houston)

Overview

Today's energy companies are fueled by technology. To protect their investments and manage risk inherent in those technologies, they need advisors who understand the energy industry’s unique challenges. As an intellectual property lawyer, co-chair of the firm's Energy IP Practice Group, and life-long Houstonian, Liz Flannery knows how to identify and protect energy companies’ most critical intellectual property (IP) interests.

Global energy companies rely on Liz's experience to help solve intellectual property problems fundamental to their businesses. Liz has successfully tried cases for major oilfield services and equipment companies both in asserting their IP rights and defending them from allegations of infringement. Even more critically, Liz often helps energy companies avoid IP disputes before they start by developing strategies to ensure freedom to operate, avoid IP infringement, license IP, and manage risk. While important to larger companies, this skill-set can make or break mid-size and smaller energy companies’ that develop valuable innovations. Liz's common-sense strategies protect the IP interests that are critical to their success.

A seasoned litigator, Liz has tried numerous complex patent and trade secret cases in the energy industry, as well as cases involving life sciences, consumer goods, and computer technologies in courts and agencies across the country. Regardless of the industry, Liz's passion for complex IP shines through in how she manages teams to teach IP issues and technology to judges, juries, and clients. Liz enjoys translating that trial experience to educate companies about how to protect their IP and avoid IP liability and risk. Liz also is proud to lead the firm's IP group in Houston as Department Chair, and enjoys coordinating the work of her partners and mentoring talented associates in one of Houston's preeminent IP practices.

Admissions & Affiliations

  • State Bar of Texas
  • United States Patent and Trademark Office
  • United States Court of Appeals for the Federal Circuit
  • United States District Courts for the Northern, Southern, Eastern and Western Districts of Texas
  • The Hon. Nancy F. Atlas Intellectual Property American Inn of Court
  • Houston Intellectual Property Law Association
  • J.D., University of Michigan Law School 2004
    Articles Editor, Michigan Telecommunications & Technology Law Review
    Henry M. Campbell Moot Court Competition, Quarterfinalist
  • B.A., Chemistry & Political Science, Rice University 2001
    President's Honor Roll

Experience

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 in April 2021, the jury returned a verdict for our client that the allegedly-misappropriated information was not a trade secret.
  • 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 involving multiple patents relating to directional drilling software technologies.
  • 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 a decision by the United States Patent Office’s (USPTO) Patent Trial and Appeals Board (PTAB) to institute inter partes reviews (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.
  • Defending a provider of fuel technology solutions for the energy sectors in a patent infringement action in federal court for the Western District of Texas and IPRs at the USPTO involving three patents relating to fuel distribution systems. This case is in its early stages.
  • 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 major web services provider in multiple cases in federal court for the Eastern District of Texas involving patents relating to web-based location technology. The cases resulted in favorable outcomes prior to Markman hearings.
  • 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.