Overview Experience Affiliations Honors & Awards Publications & Presentations

Overview

Bill has advised Fortune 100 companies to VC funded start-ups on complex intellectual property (IP) issues for more than twenty-five years. His clients represent a broad spectrum of industries including energy, construction, telecommunications, e-commerce, and software. Through his work with general counsel and IP counsel in these industries, Bill has gained a deep understanding of the related technology, particularly software used in the oil and gas industry.

Bill has represented litigants in patent litigation related to software and mechanical devices, trademark and unfair competition litigation, and copyright litigation before numerous federal district courts, the Federal Circuit Court of Appeals, the Fifth Circuit Court of Appeals, and the Tenth Circuit Court of Appeals. Bill has also worked closely with both local and FBI law enforcement agencies in matters related to trade secret theft under the Economic Espionage Act.

Bill has handled numerous matters before the US Patent and Trademark Office (PTO), which include the filing and prosecution of patent and trademark applications and related appeals before the Patent Trial and Appeal Board and the Trademark Trial and Appeal Board.

Bill has worked closely with foreign associates to develop and manage worldwide patent and trademark portfolios for clients that strengthen their market position. In addition, he regularly assists clients with leveraging and monetizing their IP through the sale and licensing of their technologies. He has prepared numerous patentability and trademark clearance opinions, and has assisted clients in evaluating patent infringement by rendering invalidity and non-infringement opinions.

Bill also enjoys golf, tennis and traveling.

Experience

Patent Litigation

  • Represented Landmark Graphics in patent suit for infringement of software patents covering seismic data processing
  • Retained after final judgment to represent Sorkin in an appeal to the Federal Circuit
  • Represented Mr. Tucek in suit for infringement of patents dealing with mechanical devices
  • Defended Novo Industries in a suit for patent infringement that was decided by summary judgment for Novo and affirmed by the Federal Circuit
  • Defended Pharmacia & Upjohn in a patent royalty dispute, which was won on summary judgment by Pharmacia & Upjohn and affirmed by the 10th Circuit
  • Represented GAIA in a complex multiforum litigation involving patent ownership, infringement (patent and trademark) and theft of trade secrets
  • Represented Fairfield Industries in suit alleging infringement of patents covering nodal transmission of seismic data
  • Represented Mr. Hor in suit for correction of inventorship of patent covering superconductivity

Trademark Litigation

  • Represented A2D and Riley in suit for trademark infringement, tortious interference, and breach of contract based on well logs sold by defendants
  • Defended Founders in a trademark infringement dispute
  • Represented Bechtel in the United States Patent and Trademark Office before The Trademark Trial and Appeal Board in opposition proceedings
  • Represented Baker Hughes in the United States Patent and Trademark Office before The Trademark Trial and Appeal Board in opposition proceedings
  • Defended Maple Leaf Homes in a copyright infringement and Lanham Act case involving architectural plans
  • Defended USA Healthnet, Inc. in a trademark and Lanham Act dispute

Copyright Litigation

  • Defended Nissun Cap in a copyright infringement and unfair competition dispute
  • Defended Hughes Christensen in a copyright infringement and unfair competition dispute
  • Defended Burke Read against allegations of copyright infringement for a design used on commercial products

Trade Secret Litigation

  • Represented Traver Technologies in a theft of trade secrets suit filed against former employees

Prosecution – Transactions

  • Represented Magic Earth, Inc. in negotiating the transfer of all rights related to Texaco’s GeoProbe® software technology to Magic Earth
  • 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

Affiliations

  • American Intellectual Property Association: Licensing, Patent Litigation and Electronic Computer Law Sections
  • Houston Intellectual Property Law Association
  • Houston Bar Association

Community & Civic

  • Texas A&M 12th Man Foundation
  • Houston Zoo, Ambassadors Club
  • Spring Branch ISD, mentor, 2016-present; Long Range Facilities Planning Committee member, 2017; Campus Improvement Team member for WAIS, 2016-2017
  • Spring Branch Memorial Sports Association
  • Gaywood Civic Association
  • Chapelwood United Methodist Church
  • Board of Cornerstone Family Ministries

Honors & Awards

  • Top Lawyer – Intellectual Property Rights, Houstonia Magazine, 2016
  • Outstanding Journal Article, Fellows of Texas Bar Foundation
  • Who’s Who in American Law
  • Outstanding Young Men of America
  • Board member of Cornerstone Family Ministries

Publications & Presentations

  • Texas A&M University MBA/Law Symposium, presenter
  • Intellectual Property Primer, presenter, Bechtel Corporation
  • Intellectual Property Workshop, presenter, Landmark Graphics Corporation
  • Intellectual Property Workshop, presenter, Bechtel Corporation
  • Energy Software Developers Need to Protect Their ‘Gold’, author, Houston Business Journal
  • How to Stake a Claim to Your Intellectual Property, author, First Break, 2001
  • How to Stake a Claim to your Intellectual Property, author, The Leading Edge, 2001

Education

  • J.D., St. Mary’s University School of Law
  • B.S., Texas A&M University

Admissions & Certifications

  • State Bar of Texas
  • United States District Courts for the Northern, Southern, Eastern and Western District of Texas
  • U.S. Courts of Appeals for the Fifth, Tenth and Federal Circuits
  • United States Patent and Trademark Office