Elizabeth Durham Flannery

Department Chair - Intellectual Property (Houston) Partner

[email protected]

Houston

P: +1.713.229.2104
F: +1.713.229.7704
Liz Flannery Photo

Elizabeth Flannery works with large and small clients to protect their intellectual property interests to maximize the value of technology assets to their business model and corporate culture. Ms. Flannery assists clients in a variety of geographies and industries, including chemical manufacturers, biotechnology companies, retailers, and a variety of different types of companies in the energy industry. She actively practices in all areas of intellectual property law, including patent and trade secret litigation, prosecution of patent applications, adversarial proceedings at the USPTO (including inter partes review (IPR)), licensing agreements, pre-suit investigations, freedom-to-operate advice, patent opinions, and general counseling. Ms. Flannery has represented both patent owners and defendants in all stages of complex patent litigation, and tried major patent cases in various district courts, the Court of Appeals for the Federal Circuit, and the International Trade Commission.

Related Experience

Litigation Experience

  • 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 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 defense verdict 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 the client’s favor.
  • Defending clinical genetic testing company in a patent infringement action in federal district court for the Western District of Texas involving two patents relating to cell-free DNA testing. This case is in its early stages.
  • 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 USPTO to institute IPRs on two of the asserted patents.
  • Representing major oilfield drilling company in a patent infringement action in federal district court for the Northern District of Texas involving multiple patents relating to directional drilling technologies. This case is in its early stages.
  • 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 several asserted patents. In the Delaware action, the client received a favorable jury verdict on both its key patent and on the one patent the competitor 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 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 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.
  • 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 patent holder in an infringement case in federal court for the Western District of Texas involving stabilized connectors for instrument manifolds for pipelines. The case resulted in a favorable outcome after the Markman hearing.
  • Represented public university in a patent inventorship dispute action brought 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.

IP Portfolio Development & Counseling Experience

  • Management of patent application filing and prosecution relating to drilling, well stimulation, and cementing technologies for a major oilfield services provider
  • 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
  • Advice regarding in risk management freedom to operate, employment agreements, and licensing agreements involving intellectual property for a major oilfield services provider
  • Negotiation of joint development agreement with a university on behalf of a large oil and gas exploration company
  • Negotiation of joint development agreement relating to fiber optic technologies used in oilfield operations
  • Analysis and preparation of opinion regarding patents directed to blood processing systems for a major pharmaceutical company

Awards & Community

Recognized as a Texas Super Lawyer-Rising Star (Thomson Reuters), 2010, 2011, 2012, 2013, 2014, 2015, 2016, 2017 & 2018

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Events

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2019 Baker Institute

For the third consecutive year, Baker Botts and the Center for Energy Studies at Rice University’s Baker Institute are co-hosting their annual energy summit. The event will provide a forum for key market players and decision-makers to gather insights into the future of the dynamic energy industry, ranging from oil and gas to electricity, renewables and technology.