Leisa Talbert Peschel
Leisa Talbert Peschel is both an intellectual property trial lawyer and counselor. She has considerable experience litigating intellectual property matters, including over seventy patent infringement cases. Leisa leverages her scientific background to gain an 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 streaming television, automatic content recognition, targeted advertising, authentication and encryption technology, Power-over-Ethernet (PoE), biotechnology research tools, chemical compositions, dental imaging technology, secondary containment structures, audio compression technology, display technologies, battery technologies, plastics, pipe thread compounds, blow-out preventers, hydraulic fracturing technologies, security systems, computer software methods, and electronics. Leisa also has had lead roles in numerous patent post-grant proceedings, including inter partes reviews and ex parte reexaminations.
In addition to her litigation experience, Leisa maintains an active transactional practice. Leisa counsels clients on how to obtain, enforce, and license intellectual property, including trademark acquisition and brand management. 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 a special emphasis on patent-ineligible subject matter), licensing, patent damages, patent reform, concurrent district court litigation and post-grant review proceedings, the Lanham Act, standing, e-discovery, the intersection of science and the law, and design patent infringement.
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
United States Supreme Court
United States Court of Appeals for the Federal Circuit
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
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
Representative Intellectual Property Litigation
- Chrimar Systems, Inc. et al. v. ALE USA Inc. (Federal Circuit)—On behalf of defendant ALE USA Inc. in a patent infringement case involving standardized Power-over-Ethernet technology obtained dismissal following two Federal Circuit appeals; Leisa was Counsel of Record for ALE in the Supreme Court, which denied Chrimar’s petition for a writ of certiorari on June 29, 2020.
- ESW Holdings, Inc. v. Roku, Inc. (Western District of Texas – Waco Division)—Obtained a complete defense jury verdict for Roku, Inc. in what started as a five-patent infringement case. Prior to trial, the Court granted Roku’s summary judgment motion of no infringement as to two of the five patents. Another patent was dismissed with prejudice. After a four-day trial on the remaining two patents in which the plaintiff asked the jury to award a total of $228 million, the jury returned a verdict of no infringement and invalidated the sole asserted claim in one of the patents. Plaintiff was awarded no damages.
- Prism Technologies v. Adobe Systems, Inc., et al. (District of 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. (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. (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. (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. (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. (Southern District of Texas)—Obtained motion for summary judgment for a manufacturing company.
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.
- Prosecuted patents in the biotechnology, chemical, and oilfield services industries.
- 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.
- Lawdragon 500 Leading Litigators in America, 2022
- “Top Lawyer” in Best of Houstonia, Houstonia Magazine, 2018
- “Texas Rising Star,” Super Lawyers by Thomson Reuters, 2017
- Admitted to the Texas Bar College Legal Honor Society, 2017
- “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)
- Presenter, “They are Back: Section 112 Defenses”, State Bar of Texas Intellectual Property Law Section, Advanced Intellectual Property Litigation Course (February 2022)
- Co-Presenter with Hilda Gilvan, “Interplay and Strategies for Parallel Proceedings,” State Bar of Texas Intellectual Property Law Section, Advanced Intellectual Property Litigation Course (July 2021)
- Speaker, “Texas Made Its Mark: Reflecting on the History of the Lanham Act on its 75th Anniversary,” Texas General Counsel Forum (July 2021)
- Guest Lecturer, Patent Litigation, University of Texas School of Law (April 2021)
- Speaker, “Patent Eligible (or Not) Subject Matter,” State Bar of Texas Intellectual Property Law Section, Advanced Intellectual Property Law Course (February 2021)
- Speaker, “Weathering the Storm: Representing Clients Who Are Not Used To IP Litigation,” State Bar of Texas Intellectual Property Law Section, Advanced Intellectual Property Litigation Course (October 2020)
- Speaker, “Moving Away From Scorched Earth Litigation: Weathering the Storm for Small Clients,” American Intellectual Property Law Association Virtual Spring Meeting (May 2020)
- 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
- Immediate Past Chair, 2021-2022
- Chair, 2020-2021
- 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
- American Bar Foundation, Fellow
- Texas Bar Foundation, Fellow
- Nancy F. Atlas Houston Intellectual Property American Inn of Court, 2012-2018, 2020-2022
- Programming Committee Co-Chair, 2021-2023
- American Intellectual Property Law Association
- Texas Intellectual Property Law Foundation
- President, 2022
- Founding Member and Board Member, 2020-present
- Houston Intellectual Property Law Association
- Vice President, 2023-2024
- Fall Institute Chair, 2022-2023
- Secretary, 2021-2022
- Tax and Compliance Director, 2018-2021
- Houston Bar Association
June 5, 2023Insights
Second Circuit Narrows Defend Trade Secrets Act Remedies
By Michael A. Drab and Leisa Talbert Peschel
The Second Circuit just raised the bar for recovering avoided costs as unjust enrichment in a Defend Trade Secrets Act (“DTSA”) case. With a successful DTSA claim, a trade secret owner may obtain an injunction against further use or disclosure of the trade secrets, recover actual damages, and recover damages for unjust enrichment caused by the misappropriation not otherwise included in the damages award.
November 17, 2022Newsletters
JW Diversity & Inclusion Newsletter – November 2022
View Jackson Walker’s November 2022 Diversity & Inclusion Newsletter, Perspectives.
October 7, 2022Attorney News
Jackson Walker Congratulates 36 Attorneys Named Among the Lawdragon 500 Leading Litigators in America
Jackson Walker announces the selection of 36 attorneys to Lawdragon’s inaugural list of the 500 leading litigators in America.
April 21, 2022Newsletters
JW Diversity & Inclusion Newsletter – April 2022
View Jackson Walker’s April 2022 Diversity & Inclusion Newsletter, Perspectives.
June 2, 2021Newsletters
IP Litigation Insider—June 2021
David Folsom Recognized in Chambers USA Guide; Jackson Walker Delivers Complete Defense Jury Verdict for Roku in $228 Million WDTX Patent Trial; Wasif Qureshi and Leisa Talbert Peschel Reflect on Roku’s $228M Patent Trial Victory; Jackson Walker Helps Family Launch Comic Book Brand; Virtual Mediations and Patent Litigation: Lessons Learned and Best Practices; Chris Rouk Comments on Patent Litigation in Texas; Emilio Nicolas Moderates Panel on the New CASE Act and Copyright Claims Board
May 5, 2021Client Results
Wasif Qureshi and Leisa Talbert Peschel Reflect on Roku’s $228M Patent Trial Victory
Houston partners Wasif Qureshi and Leisa Talbert Peschel recently shared some insight about Jackson Walker’s successful representation of Roku, Inc. in a $228 million patent trial in the Western District of Texas – Waco Division.
April 13, 2021Client Results
Jackson Walker Obtains Summary Judgment of No Infringement for Roku in WDTX Patent Dispute
Jackson Walker obtained an order from U.S. District Judge Alan D. Albright granting Roku, Inc.’s motion for summary judgment of no infringement of U.S. Patent Nos. 9,451,294 and 9,420,349, both directed to Automatic Content Recognition (ACR) technologies.
April 13, 2021Client Results
Jackson Walker Delivers Complete Defense Jury Verdict for Roku in $228 Million WDTX Patent Trial
After a four-day in-person trial, Jackson Walker delivered a complete defense jury verdict for Roku, Inc. in what started as a five-patent infringement case brought by ESW Holdings, Inc. The trial, which began on Monday, April 5, 2021, was held in the Western District of Texas – Waco Division before U.S. District Judge Alan D. Albright.
February 26, 2021Attorney News
Leisa Talbert Peschel Accepts Invitation to Join American Bar Foundation as a Fellow
Jackson Walker proudly congratulates Houston partner Leisa Talbert Peschel on her election as a Fellow of the American Bar Foundation.
February 11, 2021Newsletters
JW Diversity & Inclusion Newsletter – February 2021
View Jackson Walker’s February 2021 Diversity & Inclusion Newsletter, Perspectives.