Partner, Lee & Hayes, PLLC (2013-2016)
Federal Court: Lead counsel in numerous intellectual property matters. Convinced the Northern District of Texas to stay patent litigation in favor of inter partes review before the petition had even been ruled upon by the PTAB; Defeated preliminary injunction in the Western District of Washington brought by a secured creditor seeking against a team of software developers to acquire the IP; handled technical tutorial and Markman hearing in multi-patent case filed in the Central District of California against an Atlanta-based software company; obtained voluntary dismissal by patent owner of patent infringement case following motion to dismiss exposing fatal flaws in complaint filed in the Eastern District of Texas; represented several defendants in multi-defendant patent cases filed in the Eastern District of Texas by numerous NPEs; represented indigent criminal defendant in the Western District of Texas under the Civil Justice Act.
Patent Trial and Appeal Board (PTAB): Started the firm’s Post Grant Review (PGR) practice group to take advantage of the new streamlined Patent Office procedures created by the America Invents Act (AIA). Lead counsel in 25 PGR matters. Completed 11 trials before the PTAB from petition to final written decision. Counsel of record in six appeals to the United States Court of Appeals to the Federal Circuit. Lead counsel for petitioner in Click-to-Call Technologies, LP, v. Oracle Corp., 136 S. Ct. 2508 (2016), in which the Court granted petitioner’s petition for writ of certiorari, vacated the Federal Circuit’s decision, and remanded (GVR) in light of Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2137 (2016).
Principal, McKool Smith, PC (2000-2013)
Trial and appellate counsel in commercial litigation cases including patent infringement, trade secret, breach of contract, employment, environmental, and oil and gas. Responsible for all phases of litigation from initial pleading to appeal--set case strategy, conduct fact and expert discovery, draft and argue motions, examine witnesses, prepare expert reports, and mediate settlements. Significant experience with Markman hearings, having handled over a dozen such hearings, expert preparation, and dispositive motions. Voted as Texas Super Lawyer in IP Litigation from 2009-2016.
Associate, Brobeck Phleger & Harrison, LLP (1998-2000)
Responsible for conducting fact and expert discovery in complex patent and trade secret cases; drafted pleadings; argued motions; negotiated settlements and licensing deals.
Law Clerk, Honorable S. Jay Plager, United States Court of Appeals, Federal Circuit (1996-1998)
Prepared bench memos and initial drafts of opinions; consulted with other chambers on opinions.
Patent Agent, Marger Johnson & McCollom, PC (1992-1996)
Drafted and prosecuted patent and trademark applications before the United States Patent and Trademark Office; drafted invalidity and non-infringement opinions; and counseled clients.
Development Engineer, Hewlett Packard (HP) Co. (1988-1992)
Designed and tested microprocessor-based systems and application specific integrated circuits (ASICs) for HP’s DeskJet® and LaserJet® printers.