Biography
Leisa Talbert Peschel is both an intellectual property trial lawyer and counselor. Leisa has considerable experience litigating intellectual property matters, including over fifty patent infringement cases. Her cases typically involve highly complex technical and legal issues. Leisa leverages her scientific background to gain a better understanding of a client’s technology to better position her client throughout a case. She has been involved in cases dealing with a wide array of technologies, including Power-over-Ethernet (PoE), biotechnology research tools, chemical compositions, audio compression technology, display technologies, plastics, pipe thread compounds, blow-out preventers, security systems, computer software methods, and electronics.
In addition to her litigation experience, Leisa maintains an active transactional practice. Leisa counsels clients on how to obtain, enforce, and license intellectual property. She also gives strategic guidance regarding intellectual property transactions, which includes performing due diligence on intellectual property portfolios. Her transactional practice also includes preparing patent opinions of counsel, including freedom-to-operate, noninfringement, and invalidity opinions. Leisa’s scientific background is particularly helpful to clients seeking an opinion of counsel relating to biotechnology, chemical, or oil field services products.
Leisa is also a frequent author and speaker on intellectual property law topics. She has spoken on matters relating to corporate patent policies, patent infringement defenses (including section 101 and 112 defenses), licensing, patent damages, patent reform, concurrent district court litigation and post-grant review proceedings, standing, e-discovery, the intersection of science and the law, and design patent infringement.
Education
B.S., Biochemistry, University of Texas at Austin
B.S., Chemistry, University of Texas at Austin
Ph.D. Biomedical Sciences, Program in Environmental and Molecular Carcinogenesis
J.D., with honors, University of Texas School of Law
- Texas Intellectual Property Law Journal, Editor-in-Chief
Basic Mediation Training, A.A. White Dispute Resolution Center, University of Houston Law Center
Bar Admissions
Texas, 2007
Court Admissions
United States District Court for the Northern, Southern, Western, and Eastern Districts of Texas
United States District Court for the Northern District of Illinois
United States Patent and Trademark Office
United States Court of Appeals for the Federal Circuit
Representative Intellectual Property Litigation
- Chrimar Systems, Inc., et al. v. Alcatel-Lucent, et al. (United States District Court for the Eastern District of Texas) – On behalf of defendant ALE USA Inc. in a patent infringement case involving Power-over-Ethernet technology, obtained judgment as a matter of law that there was no willful infringement and a jury verdict favorable on damages.
- Chrimar Systems, Inc., et al. v. Alcatel-Lucent, et al. (United States District Court for the Eastern District of Texas) – On behalf of defendants in the first patent infringement lawsuit between the parties, obtained a dismissal with prejudice after significantly narrowing the scope of accused products.
- Prism Technologies v. Adobe Systems, Inc., et al. (United States District Court for Nebraska) – On behalf of defendant McAfee, Inc. in a patent infringement lawsuit concerning computer network access technology, part of a team that obtained summary judgment of noninfringement, which was later affirmed by the Federal Circuit (541 Fed. Appx. 999).
- Media Queue, LLC v. Netflix, Inc. et al. (United States District Court for the Northern District of California) – Representing defendant Blockbuster Inc. along with David Wooten in a patent infringement case involving computer software for maintaining a “queue” of desired movies, the team obtained favorable claim constructions that resulted in summary judgment of noninfringement.
- Invitrogen Corporation, et al. v. Evident Technologies, Inc. (United States District Court for the Eastern District of Texas) – Obtained a consent judgment and permanent injunction on behalf of plaintiffs against the defendant in a patent infringement case involving quantum dot technology and molecular probes.
- Paradox Security Systems, Ltd., et al v. ADT Security Services, Inc. et al. (United States District Court for the Eastern District of Texas) – Part of a team representing defendant Monitronics International in a patent infringement jury trial concerning security system electronics that obtained judgment as a matter of law of noninfringement at the close of the plaintiff’s case.
- Lubrizol Oilfield Chemistry, LLC, et al. v. InTerraChem, LLC, et al. (United States District Court for the Southern District of Texas) – In a case involving trade secrets related to specialty chemicals and on behalf of the plaintiffs, obtained a favorable resolution following a motion for a preliminary injunction.
- Asset Guard Prods. Inc. v. Sentinel Manufacturing, Inc., S.D. Tex. (2017-19). Jackson Walker represented a manufacturing company in this patent infringement lawsuit. The court granted the motion for summary judgment that the client’s current products do not infringe.
Representative Transactional Experience
- Negotiated and drafted agreements regarding confidentiality, intellectual property licensing, clinical trials, and assignment of intellectual property rights for nonprofit research, biotechnology, and oilfield services companies.
- Conducted product clearance and design around analyses and opinions, including for biotechnology research tools, chemical processes, drilling tools, and real-time video streaming technologies.
- Provided patent opinions on noninfringement and invalidity grounds.
- Performed trademark clearance analyses.
- Performed due diligence on intellectual property being transferred in mergers and acquisitions occurring in both the biotechnology and oil and gas industries.
Representative Honors & Involvement
- Texas Bar College – Legal Honor Society, Admission in 2017
- “Top Lawyer” in Best of Houstonia, Houstonia Magazine, 2018
- Rising Star, Super Lawyers by Thomson Reuters, 2017
Publications
- “Extraterritorial Reach Of Patents— Impact Of Recent Supreme Court Decisions” (July 2018)
- “Supreme Court Holds Sale of Patented Product Exhausts All Patent Rights” (June 2017)
Speaking Engagements
- Speaker, “The Supreme Court’s Year in Intellectual Property,” American Bar Association Intellectual Property Law Section Webinar (December 2019)
- Speaker, “Claim Construction in Parallel Proceedings/IPR,” HIPLA/UHLC 35th Annual Institute on Intellectual Property Law (September 2019)
- Speaker, “Structuring Indemnification Provisions for Patent Infringement,” State Bar of Texas Intellectual Property Law Section, 15th Annual Advanced Patent Litigation Course (July 2019)
- Moderator, “Lessons from the Trenches: Damages Experts,” State Bar of Texas Intellectual Property Law Section, 32nd Annual Advanced Intellectual Property Law Course (March 2019)
- “Managing Parallel District Court And PTAB Proceedings – ILT Part 1. Trends & Lessons Learned In The Trenches On Stays, Intermingled Discovery & Claim Construction,” Eastern District of Texas Bar Association, Eastern District of Texas 2018 Bench Bar Conference (October 2018)
- “Extraterritorial Reach of Patents,” State Bar of Texas Intellectual Property Law Section, Advanced Patent Litigation Course (July 2018)
- “Shifting the Boundaries in Patent Law—The Supreme Court’s Recent Decisions,” American Intellectual Property Law Association Webinar (September 2017)
- “IPR, PGR, and CBM Use in Parallel with Litigation,” State Bar of Texas Intellectual Property Law Section, Advanced Patent Litigation Course (July 2017)
- “Section 112 Defenses,” State Bar of Texas Intellectual Property Law Section, Advanced Patent Litigation Course (July 2016)
- “Corporate Patent Policies for Innovation—Invention Disclosures, Patent Committees, and Standards,” State Bar of Texas, 29th Annual Course Advanced Intellectual Property Law Course (February 2016)
- “Section 101—Trends in Computer Software/ Business Method Patent Eligibility,” State Bar of Texas, 27th Annual Advanced Intellectual Property Course (March 2014)
- Co-presented with Irene Kosturakis, “Section 101—Business Methods Software,” HIPLA/UHLC 29th Annual Institute on Intellectual Property Law (September 2013)
- “Patent Reform Basics,” State Bar of Texas Intellectual Property Section, Annual Meeting CLE materials (June 2012)
- State Bar of Texas Intellectual Property Section
- Chair-Elect, 2019-2020
- Vice Chair, 2018-2019
- Secretary, 2016–2018
- Chair’s Award for Outstanding Service, 2015–2016
- Council Member, 2013–2016
- Course Director, 32nd Annual Advanced Intellectual Property Law Course, 2019
- Nancy F. Atlas Houston Intellectual Property American Inn of Court, 2012-2018
- Texas Bar Foundation, Fellow
- American Intellectual Property Law Association
- Houston Intellectual Property Law Association, Tax and Compliance Director
- Houston Bar Association
- The Woodlands United Methodist Church, Children’s Ministry Volunteer
Leisa has developed particular knowledge and experience in the following areas:
- Patent Litigation
- Trade Secret Litigation
- Intellectual Property Protection (including through patents, trademarks, copyrights, and trade secrets)
- Intellectual Property Corporate Policies
- Patent Opinions of Counsel
- Due Diligence for Intellectual Property Transactions
- Technology and Healthcare Contracts