William P. Jensen

Shareholder
713-752-8689
wjensen@craincaton.com

vCard

Experience

Mr. Jensen represents private and public companies in intellectual property litigation, licensing and prosecution. Mr. Jensen has extensive litigation experience in intellectual property matters relating to patents, trademarks, trade secrets and copyrights at both trial and appellate levels. His representation of litigants in matters relating to trade secret theft under the Economic Espionage Act of 1996 has involved working with local and FBI law enforcement agencies. In addition to his litigation practice, he has served as an expert witness for plaintiffs and defendants in trade secret and copyright litigation.

Mr. Jensen is experienced in domestic and foreign prosecution of patent applications dealing with mechanical and electromechanical arts and has prosecuted numerous trademark, servicemark and copyright applications. He represents clients in the energy, construction, telecommunications, e-commerce and software industries. His practice also deals with transactional matters relating to the valuation, sale and licensing of intellectual property. He has assisted software development companies with evaluating, acquiring and leveraging their intellectual property.

Representative Cases

Sorkin v. Amsysco, Inc.; Case No. 4:04-CV-04182; In the United States District Court for the Southern District of Texas, Houston Division: retained after final judgment to represent Sorkin in an appeal to the Federal Circuit.

• Landmark Graphics Corp., et al. v. Seismic Micro Technology, Inc., et al.; Case No. 4:05-CV-02618; In the United States District Court for the Southern District of Texas, Houston Division: represented plaintiff in patent suit for infringement of software patents, which was settled on confidential terms.

• Milan Tucek v. The Virtex Group, Inc., d/b/a Range Rustler U.S.A. and Gustafson Manufacturing Co.; et al.; Case No. H-04-3452; In the United States District Court for the Southern District of Texas, Houston Division: represented plaintiff (Tucek) in suit for infringement of patents dealing with mechanical devices, which was settled on terms favorable to the plaintiff.

• Gables Residential Trust v. Founders Commercial, Ltd.; C.A. No. H-02-0562; In the United Sates District Court for the Southern District of Texas, Houston Division: Represented Founders in a trademark infringement dispute, which was settled on terms favorable to Founders.

• Axis AB v. Bechtel Corporation; Opposition No. 124,486; In the United States Patent and Trademark Office before the Trademark Trial and Appeal Board: Represented Bechtel in opposition proceedings that resulted in a concurrent use agreement.
• Baker Hughes Incorporated v. Baker Pumps; Opposition No. 91/157,581; In the United States Patent and Trademark Office before The Trademark Trial and Appeal Board: Represented Baker Hughes in opposition proceedings that resulted in a concurrent use agreement.
• Spring Window Fashions L.P., Shade-O-Matic, Ltd. And Manor TEC, Inc. v. Novo Industries, L.P.; 323 F. 3d 989 (Fed. Circ. 2003): Represented Novo Industries, L.P. (now Royal Window Coverings) in a patent infringement case which was won on summary judgment by Novo and affirmed by the Federal Circuit.
• Grant v. Pharmacia & Upjohn Co., 314 F.3d 488, 65 U.S.P.Q.2d 1308 (10th Cir. (Colo.), Dec. 23, 2002)  (No. 01-1509): represented Pharmacia & Upjohn in a patent royalty dispute, which was won on summary judgment by Pharmacia & Upjohn and affirmed by the 10th Circuit.
• Ms. Sherri Ham v. Magic Earth, Inc., Magic Earth L.L.C.; Case No. 2001-45659; In the 164th Judicial District Court, Harris County, Texas: Represented Magic Earth in an employment dispute that was ultimately dismissed in favor of Magic Earth.
• Douglas G. Elliot and Patricia J. Elliot v. Timberoof Roof and Siding Co., Inc.; Cause No. 1999-07229; In the 333rd Judicial Court, Harris County, Texas: Represented plaintiffs Elliot in a commercial dispute that was referred to arbitration and resulted in an award for the plaintiffs.
• Kati Sportcap, Inc. v. Capline International, Inc. d/b/a Nissin Cap; and Nissun Cap, Inc.; C. A. No. H-99-4159; In the United States District Court for the Southern District of Texas, Houston Division: Represented Nissun Cap in a copyright infringement and unfair competition case that was favorably settled for less than plaintiff’s demand.
• Traver Technologies, Inc., a Texas Corporation v. Mike Good, et al.: Represented Traver Technologies in a theft of trade secrets case filed against former employees. Obtained permanent injunction against defendants, precluding competition and inevitable disclosure of trade secrets. Coordinated efforts with FBI investigation.
• Bob Were Photography v. Hughes Christensen, et al.: Represented Hughes Christensen in a copyright infringement and unfair competition case that was favorably settled for less than plaintiff’s demand.
• Kenneth W. King v. Maple Leaf Homes, et al.; U. S. District Court for the Southern District of Texas, Houston Division: Represented Maple Leaf Homes in a copyright infringement and Lanham Act case involving architectural plans, which was favorably settled for less than plaintiff’s demand.
• Healthnet, Inc. v. USA Healthnet, Inc.; U.S. District Court for the Southern District of California: Represented USA Healthnet, Inc. in a trademark and Lanham Act case settled on terms favorable to USA Healthnet, Inc.
• GAIA Technologies, Inc. v. Reconversion Technologies, Inc. et al; Cause No. 93-3334; In the U.S. District Court for the Southern District of Texas, Houston Divi-sion: Represented GAIA in a complex multi-forum litigation involving patent ownership, infringement (patent and trademark) and theft of trade secrets, which resulted in an $18MM verdict for GAIA.
• Bill Gibbons v. Fisher Controls International, Inc.; Cause No. 90-034180; In the 129th Judicial District Court, Harris County, Texas. Represented plaintiff in a complex business tort case, which resulted in a $3.4MM+ verdict for plaintiff.
• Houston Monarch, Inc. v. Ernst & Whinney, First Reserve Capital Management Corporation, First Reserve Corp., Broun Energy Incorporated, McMurry Oil Tools Incorporated, W. R. Gray, E. C. Broun, Jr., Paul G. McDermott, Bruce Ezell, T. M. Miknor and David Berryhill; Cause No. 89-048692; In the 190th Judicial Court, Harris County, Texas: Represented Houston Monarch in a complex business tort case, which resulted in a $162MM+ verdict for Houston Monarch.

Prosecution/Transaction Experience

• Represented Magic Earth, Inc. in negotiating the transfer of all rights related to Texaco’s GeoProbe® software technology worth $50MM to Magic Earth in 1999.
• Responsible for all domestic and international licensing and transactional matters for Magic Earth as its acting general counsel between 1999 and 2004.
• Represented Magic Earth, Inc. in negotiating the sale of Magic Earth stock worth $100MM to Halliburton Company in 2001.
• Prepared various intellectual property-related licenses and joint development agreements for chemical, energy, construction and software companies.
• Prepared and prosecuted numerous patent, trademark, and copyright applications. Prepared appeals to the Board of Patent Appeals and Interferences and the Trademark Trial and Appeal Board.
• Prepared patentability, trademark clearance and patent invalidity/non-infringement opinions for clients in the energy and construction industries.

Associations/Affiliations

• American Intellectual Property Law Association: Licensing, Patent Litigation and Electronic Computer Law Sections
• Houston Intellectual Property Law Association
• The State Bar of Texas: Intellectual Property Law Committee
• American Bar Association: Intellectual Property Law Section
• Houston Bar Association: Speakers Bureau Committee
• Texas A & M Bar Association
• Texas A & M 12th Man Foundation

Press Releases/Honors

• Outstanding Young Men of America (1989)
• Who’s Who in American Law
• Nominated by the Fellows of the Texas Bar Foundation for Outstanding Journal Article (1992)

Publications/Speeches

• Texas A & M University MBA/Law Symposium
• “Intellectual Property Primer” presentation to Bechtel Corporation, October 2001
• “Intellectual Property Workshop” presentation to Landmark Graphics Corporation, October 2004
• “Intellectual Property Workshop” presentation to Bechtel Corporation, December 2004

• “Lessor and Lessee Liability Under Comprehensive Environmental Response, Compensation, and Liability Act (CERCLA): The Catch-22 of Lease Agreements,” 32 S. Tex. L. J. 447 (Oct. 1991); reprinted in 22 State Bar of Texas Envir., No. 22 (Fall 1991)
• Modern Dictionary for the Legal Profession (1993) (contributing author)
• “Energy Software Developers Need to Protect Their ‘Gold’,” Houston Business Journal, Volume 30, No. 44 (March 17-23, 2000)
• “How to Stake a Claim to Your Intellectual Property,” First Break, Volume 19.8, pp.464-465 (August 2001)
• “How to Stake a Claim to your Intellectual Property,” The Leading Edge, p. 1240 (November 2001)