Leisa Talbert Peschel

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

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

• 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
  • Fall Institute Chair, 2022-2023
  • Secretary, 2021-2022
  • Tax and Compliance Director, 2018-2021
• Houston Bar Association