Global Legal Chronicle
David Wille has a broad intellectual property and technology practice. While the majority of his practice focuses on intellectual property litigation and appellate work (including patent, trade secret, copyright, and trademark litigation), he has substantial experience in licensing relating to patents, trade secrets, software, and copyrights. He also handles secured transactions and mergers and acquisitions involving intellectual property.
Mr. Wille prepares and prosecutes patents in a range of technologies, and regularly provides legal advice on validity and infringement questions involving patents and copyrights. He helps clients develop policies and procedures relating to the internet, including website usage agreements, and he has handled a variety of internet issues for several Fortune 500 companies.
Mr. Wille works with clients on matters involving a broad range of technologies, such as computer software, business methods (including automated trading of futures and securities), analog and digital optical communications, telephony, cellular telephony, data communications, cable television, semiconductor fabrication and structures, semiconductor fabrication equipment, semiconductor testing, thermoelectric materials structure and fabrication, analog and digital integrated circuits, image processing, digital signal processing, photoscanners, flatbed scanners, ink jet printers, computer architecture, heat treating, food processing, train cars and subsystems, medical devices, CAD/CAM applications, computer storage, video conferencing, and oil drilling.
After graduating from law school, Mr. Wille served as a law clerk to the Honorable Jerry Smith of the United States Court of Appeals for the Fifth Circuit. Mr. Wille is currently an adjunct professor at The University of Texas School of Law, where he teaches Basic Patent Law, Advanced Patent Law, and Intellectual Property Licensing. Mr. Wille is the named inventor on four U.S. patents.
- DriveCam – Represented DriveCam in a patent infringement case which addressed video surveillance equipment for commercial vehicles. Baker Botts received a summary judgment of noninfringement for DriveCam following claim construction. The appeal was dismissed by the Court of Appeals for the Federal Circuit.
- Microtek Medical – Represented Microtek in a patent infringement, which claimed various types of radiation shielding materials to be placed on either patients of “articles,” such as during x-ray procedures. Baker Botts received a summary judgment of noninfringement, which ultimately led to a favorable settlement for Microtek.
- The Manitowoc Company – Represented two subsidiaries of The Manitowoc Company in a patent infringement and breach of contract (patent license) suit involving two patents on combination oven technology including a smoking functionality. Baker Botts received a summary judgment of obviousness and license. The district court awarded attorneys fees and costs as damages for the breach of the license agreement.
- The Manitowoc Company – Represented a subsidiary of The Manitowoc Company in a patent infringement and trade secret investigation before the International Trade Commission. Baker Botts tried this case and received a ten year exclusion order for Manitowoc. The case was affirmed on appeal by the Court of Appeals for the Federal Circuit. In the parallel district action after the conclusion of the ITC proceedings, Manitowoc obtained Summary Judgment of liability based on collateral estoppel—the first case to hold that findings by the ITC on trade secrets had a collateral estoppel effect. During trial on damages and punitive damages the case settled on confidential terms, other than a worldwide injunction commensurate with the ten year term of the ITC exclusion order.
- The Manitowoc Company – Represented a subsidiary of The Manitowoc Company in a patent infringement case involving website functionality.
- Brookshire Grocery Co.--Represented Brookshire in multiple e-commerce patent infringement lawsuits.
- Kohls Department Stores – Represented Kohl’s Department Stores, Inc. in several patent infringement cases involving non-practicing entities. Settlements were reached in each of these cases.
- Lexion Medical – Represented Lexion Medical, LLC, in a patent infringement against Northgate Technologies, Inc., Smith & Nephew, Inc. and Linvatec Corporation. Ruling on cross-motions for summary judgment, Judge Kocoras granted Lexion’s motion for summary judgment of infringement and denied the defendants’ motion for summary judgment of noninfringement. The case was in the district court for the second time. In October 2006, Baker Botts particpated in a jury trial before Chief Judge James M. Rosenbaum, who was sitting in the Northern District of Illinois by designation. The jury found that the defendants infringed U.S. Patent No. 5,411,474 (“the ‘474 Patent”), that the ‘474 Patent was not invalid and awarded Lexion damages.The defendants appealed the jury’s verdict to the U.S. Court of Appeals for the Federal Circuit. In August 2008, the Federal Circuit affirmed the jury’s finding that the patent was not invalid, but vacated its finding that the patent was infringed and remanded the case to the district court based on a new claim construction. On remand, the case was assigned to Judge Kocoras. After the parties filed cross-motions for summary judgment on the issue of infringement, Judge Kocoras found for Lexion using the Federal Circuit’s new claim construction. The Court of Appeals for the Federal Circuit affirmed the summary judgment.
- Lexion Medical - Represented Lexion Medical in a false advertising suit brought by SurgiQuest, Inc. The suit involved multiple allegations of false advertising by both SurgiQuest and Lexion. After a jury trial in the District of Delaware in April, 2017, a jury found that Lexion was not liable for false advertising but that SurgiQuest was liable for false advertising. The jury awarded Lexion $2.2 million in compensatory damages and $10 million in punitive damages.
- Lexion Medical - Represented Lexion Medical in a patent infringement action brought by Conmed and SurgiQuest. Baker Botts filed a petition for inter partes review on behalf of Lexion and invalidated all claims of the patent. A petition for attorneys fees is pending in the district court.
- Infineon – Represented Infineon in a set of three cases regarding voltage regulators and semiconductor packaging. After a finding of infringement and validity had been made against Infineon, Baker Botts was hired to replace counsel for the damages/willfulness stage of the litigation. Baker Botts received a Daubert ruling and summary judgment that negated an approximately one hundred million dollar damages claim. Volterra Semiconductor Corporation v. Primarion, Inc., 2013 WL 6905555 (N.D. Cal. 2013). In two related cases, Markman proceedings were held. After the decision in one of those Markman hearings and a tentative construction provided at the second hearing, all three litigations were terminated.
- Infineon - Represented Infineon in a complicated licensing dispute involving multiple breach of contract causes of action and patent infringement allegations concerning 17 patents. The technology involved was gallium nitride high electron mobility transistors. After several years of discovery, the matter settled.
- Infineon - Represented Infineon in a patent infringement action involving a microprocessor architecture. After discovery, the matter settled.
- Infineon - Represented Infineon in a patent infringement action involving software for configuration of microprocessor based embedded systems. After discussions with the Plaintiff, the Plaintiff dismissed the case before an answer was filed.
- HTC – Represented HTC in a nine patent lawsuit involving cell phone antenna technology. The case settled on the first day of trial.
- Wal-Mart Stores – Patent litigation defense regarding RFID technology in which plaintiff stipulated to summary judgment of noninfringement following favorable Markman order, which was sustained on appeal to the Federal Circuit.
- Abbott Laboratories – Patent litigation involving blood glucose sensors.
- Wal-Mart Stores/Timex – Defended Wal-Mart and Timex in a case involving liquid crystal displays for watches brought by Fossil, Inc.
- TCI/AT&T Broadband – Participated on a team defending over 40 patent infringement lawsuits in which the client was awarded a summary judgment of noninfringement that was sustained on appeal to the Federal Circuit.
- Northrop Grumman – Appellate counsel in appeal, which reversed claim construction that had received in a summary judgment of noninfringement. The reversal resulted in a settlement for Northrop Grumman in a case involving Ethernet technology.
- Bank of America – Represented Bank of America in several patent infringement lawsuits involving encryption technology and e-commerce.
- Prudential Financial – Represented Prudential Financial in patent infringement lawsuit involving encryption technology.
- eSpeed – patent litigation in which the client received a settlement of $30 million.
- TCI/AT&T Broadband – over 40 patent infringement lawsuits in which the client was awarded a summary judgment of noninfringement that was sustained on appeal to the Federal Circuit.
- DSC Communications – trade secret litigation that produced over $140 million in damages for the client; antitrust litigation; patent procurement and opinion work.
- Electronic Data Systems – IP counsel relating to the acquisition of outsourcing contracts with American Airlines and U.S. Air, and other assets of Sabre; IP counsel involving the acquisition of SAIC by Unigraphics and the acquisition of a CAD/CAM software package from Intergraph; patent procurement; negotiation of hundreds of software and patent licenses, software development contracts, and outsourcing contracts; advice on internet matters.
- Dr Pepper/Seven Up and Cadbury Schweppes – IP counsel involving the acquisition of Hawaiian Punch assets from Proctor & Gamble; infringement litigation; patent procurement; licensing; advice on internet matters.
Awards & Community
Recognized as a Texas Rising Star, 2004 and a Texas Super Lawyer, (Thomson Reuters), 2004-2018
Listed in The Best Lawyers in America, (Woodward/White Inc.), 2007-2018
Recipient of the Lexology Client Choice Award, 2018
IP Trailblazer Award, The National Law Journal, 2017
Please join Baker Botts on Tuesday, May 24th for a CLE seminar discussing current topics in intellectual property. This presentation is pending approval for 2.0 hours of CLE credit including 0.5 hours of ethics credit by the State Bar of Texas.