Our IP attorneys obtain, protect, and enforce intellectual property rights in the United States and abroad for our clients. We are also extremely well versed at monetizing our clients’ intellectual property assets through various business transactions. Our clients range from Fortune 500 companies to emerging companies to universities to individuals.

Our activities include regularly counseling our clients about patents, trademarks, copyrights, and trade secrets; practicing before government agencies to secure those rights; rendering patentability and patent, trademark, and copyright infringement opinions; litigating to protect intellectual property; handling arbitration, mediation, and other litigation alternatives; and negotiating licenses, joint ventures, divestitures and similar business transactions to maximize the value of our clients’ intellectual property.

In short, if the matter involves intellectual property, we can and will handle it; and will do so with a highly experienced team that takes the time to understand your intellectual property objectives and formulates a plan to achieve them. Many of our IP attorneys hold advanced degrees in engineering or applied science and are licensed to practice before the U.S. Patent and Trademark Office. Moreover, their technical knowledge is balanced with considerable litigation and business experience.

Litigation

Winning an IP case is the product of experience and the execution of a skillful, balanced strategy. Jackson Walker’s team of IP attorneys and trial lawyers have litigated all types of intellectual property matters in federal and state courts across the United States, from California to Virginia, and from Illinois to Texas. We successfully represent numerous corporations, including Fortune 500 companies, in infringement lawsuits involving trademarks, trade dress, trade secrets, patents, and copyrights. Our experience includes successful appeals to the 5th Circuit Court of Appeals, the Federal Circuit Court of Appeals, the Trademark Trial & Appeal Board, and the U.S. Supreme Court. Our IP trial lawyers have also enforced and defended our clients’ intellectual property rights in arbitrations, alternative dispute forums, and proceedings before the International Trade Commission.

Patents

Our patent attorneys work with inventors and companies to file and to prosecute patent applications to protect their inventions, both domestically and abroad. Working closely with attorneys in Jackson Walker’s venture capital and tax disciplines, the IP attorneys also draft and coordinate various transfers of technological assets for commercial development and marketing. This includes negotiations with foreign entities, multiple party transfers of technology, and protection of the assets through patents in various foreign countries.

Trademarks

The most valuable assets of a company are often its trademarks. For both established and developing companies, our attorneys evaluate potential trademarks and existing trademark and trade name rights, and procure trademark registrations in the U.S. and abroad. We routinely transfer and license trademark rights, and also enforce trademark rights through U.S. Customs’ registration, negotiation, and litigation. In addition to trademarks, our IP attorneys litigate trade name and unfair competition matters, as well as handle product counterfeiting matters.

Copyrights

We handle all types of copyright matters, including the acquisition of copyright registrations for such items as books, jewelry, musical compositions, recordings, plays, artistic creations, and computer software. We also counsel and assist clients in transferring interests in copyrighted works and represent them in copyright infringement cases, ranging from computer software, to ornamental designs, to architectural works.

Franchising

We regularly advise and represent both franchisor and franchisees. Our activities include counseling franchisors regarding disclosure requirements, creating disclosure documents, obtaining registrations in states which require them and assisting in the negotiations with prospective franchisees. Our IP attorneys also are highly active in franchise litigation.

Trade Secrets

We work closely with our clients to create programs to identify, protect, and promote trade secret assets. Trade Secret assets have unique issues, particularly in transactions involving licensing and acquisition of these assets. We regularly counsel and develop strategies with our clients for developing programs to identify such information and to police its protection through secrecy programs, confidentiality agreements, and seminars and work closely with our clients on protecting these assets during the negotiation of acquisition agreements and during litigation.

Internet, eCommerce and Computer Law

Computer, communications, and multimedia technology raise a host of legal issues for our clients, both those who develop such technology and those who use it. We regularly counsel developers regarding the best methods for protecting their intellectual property, be it patent, copyright or trade secret. Our attorneys negotiate and draft, on behalf of both vendors and users, software licensing, telecommunications, program development, systems acquisition, and similar agreements. We also regularly represent clients in prosecuting or defending litigation involving claims of software copyright infringement, trade secret misappropriation, and computer product failure.

Cline H. White

Senior Counsel, San Antonio

Carl C. Butzer

Partner, Dallas

Sara K. Borrelli

Partner, Dallas

Daniel D. Chapman

Partner, San Antonio

Temple Keller

Senior Counsel, Austin

Raman N. Dewan

Partner, Austin

Brit Nelson

Partner, Houston

Brian K. Prewitt

Partner, Austin

Joseph P. Lally

Partner, Austin

Jonathan E. Lass

Partner, Austin

Mark H. Miller

Partner, San Antonio

William R. Borchers

Partner, San Antonio

Matt C. Acosta

Partner, Dallas

Amanda L. Bush

Of Counsel, Austin

Brian K. Buss

Partner, Houston

Stephanie L. Chandler

Partner, San Antonio

Chris Cravey

Partner, Houston

John M. Jackson

Partner, Dallas

Robert P. Latham

Partner, Dallas

Wasif Qureshi

Partner, Houston

David K. Wooten

Partner, Houston

Blake T. Dietrich

Associate, Dallas

David T. Moran

Partner, Dallas

David C. Myers

Partner, Dallas

Recent Patent Cases in the Eastern District of Texas

Iovate Health Sciences Inc. v. BSN and Medical Research Institute, 586 F.3d 1376 (Fed. Cir. 2009). JW served as appellate counsel for defendant and appellee Medical Research Institute in an infringement lawsuit involving dietary supplements. The Federal Circuit upheld the summary judgment on invalidity grounds granted in favor of JW’s client by the United States District Court for the Eastern District of Texas. The district court found that patent claims directed to the administration of dietary supplements to enhance recovery from fatigue were anticipated by a prior printed publication.

Orion IP, LLC v. Hyundai Motor America, 605 F.3d 967 (Fed Cir. 2010). Counsel for Hyundai in patent infringement lawsuit alleging that Hyundai’s website infringed business methods patents involving a computer assisted parts sales method and an electronic proposal preparation system. At trial, JW obtained a jury verdict of non-infringement as to the electronic proposal preparation system patent. On appeal, the Federal Circuit ruled that the parts sales method patent was invalid.

Patent Harbor, LLC v. Audiovox Corporation, et al. (E.D. Tex. [Tyler]). Jackson Walker served as lead counsel for Denon Electronics (USA) LLC. During the scheduling portion of the case, JW successfully lobbied the Court to obtain an early claim construction hearing and to defer discovery until after a ruling on claim construction. JW subsequently obtained a claim construction ruling from Magistrate Judge Love that was dispositive as to JW’s client. After Judge Davis affirmed Judge Love’s ruling, the plaintiff accepted a Stipulated Judgment of Non-infringement as to its claims against JW’s client.

Fowler Woods, LLC. v. Accuradio, Inc., et al. (E.D. Tex. [Marshall]). Jackson Walker served as lead counsel for a publicly traded media company defendant in a patent infringement lawsuit concerning the display of advertising on websites. Obtained informal dismissal of the claims against our client prior to the deadline for responding to the Complaint.

Global Sessions LP v. Travelocity.com LP, et al. (E.D. Tex. [Tyler]-pending). Lead counsel for a defendant in a patent infringement lawsuit involving hub patents and session patents. The Hub Patents generally relate to a single system with multiple functional “layers,” which interact to enable the presentation of web pages, content and/or services to users. The Session Patents generally relate to a particular method of maintaining session state on webpages.

Uniloc USA, Inc., et al. v. BCL Technologies, et al. (E.D. Tex. [Tyler]). Jackson Walker Represented a publicly traded software company in a patent infringement lawsuit concerning healthcare software. The plaintiff dismissed its claims against our client following an informal demonstration of our client’s product.

Digital Choice of Texas, LLC v. Best Buy Co., Inc., et al. (E.D. Tex. [Marshall]). JW represented RadioShack, Best Buy, Costco, Sears, Target, Sam’s Club, and Wal-Mart in this patent infringement case, where the plaintiff alleges that parental control features on DVD players infringe its patent. The case settled on favorable terms.

Advanced Encoding Solutions, LLC v. Broadcom Corporation, et al. (E.D. Tex. [Tyler]). Counsel for Ericsson Television Inc. in patent infringement lawsuit involving a patent directed to a moving picture expert group encoder processor for processing split picture video of standard and high definition television. The case settled on favorable terms.

E-Data Corporation v. The New York Times Company, et al. (E.D. Tex. [Sherman]). JW represented The New York Times in a patent action involving systems for reproducing information in material objects at a point-of-sale location. JW obtained an order transferring the case to a more favorable forum.

Mobility Electronics, Inc. v. American Power Conversion Corp. (E.D. Tex. [Texarkana]). JW represented Mobility Electronics, alleging that the defendant’s products infringe seven of its patents. JW also represented Mobility in a related action between the parties pending in the United States District Court of Massachusetts, American Power Conversion Corp. v. Mobility Electronics, Inc. (D. Mass.). The cases settled on favorable terms.

MacroSolve, Inc. v. Various Defendants (E.D. Tex. [Tyler])). Jackson Walker served as lead counsel for a group of four defendants in a patent infringement lawsuit concerning alleged infringement by mobile applications for defendants’ websites. Obtained an early favorable settlement for all our clients.

Joint Marketing International, Inc. and Kun S. Chang v. Walgreen Co., et al. (E.D. Tex. [Tyler]). JW was lead counsel for QVC, Inc. in this patent infringement lawsuit concerning a device that cleans eyeglasses. The matter settled on favorable terms.

Kawasaki Heavy Industries Ltd v. Bombardier Recreational Products, Inc., et al. (E.D. Tex. [Texarkana]). JW represented Bombardier in an alleged patent infringement of three personal watercraft technology patents. JW’s client obtained a favorable settlement.

Cheetah Omni LLC v. Verizon Communications Inc., et al. (E.D. Tex. [Tyler]). JW represented Grande Communications Networks, Inc. in a lawsuit alleging infringement of patents directed to star switching fabric and a switching element for use in an optical processing device. Settled on favorable terms.

Antor Media Corp. v. Metacafe, Inc., et al. (E.D. Tex. [Marshall]-pending). JW represents Discovery Communications, Inc. in this patent infringement action concerning a method and apparatus for transmitting information recorded on digital disks from a central server to subscribers via a high data digital telecommunications network. The case has been stayed pending reexamination.

The PACid Group, LLC v. Best Buy Co., Inc., et al. (E.D. Tex. [Tyler]). Counsel for Denon Electronics in a patent infringement lawsuit involving a patent directed to an encryption key generator system and method. Case settled on favorable terms.

Unified Messaging Solutions LLC v. Google Inc., et al. (E.D. Tex. [Tyler]). Lead counsel for a defendant in a patent infringement lawsuit alleging that a company website infringed four patents. The case settled on favorable terms.

Innovative Automation, LLC v. Audio and Video Labs, Inc. (E.D. Tex. [Tyler]-pending). Counsel for Singulus in lawsuit involving alleged infringement of a patent directed to a computer-implemented method of data duplication.

Achates Reference Publishing Inc. v. Symantec Corp., et al. (E.D. Tex. [Tyler]-pending). Counsel for GlobalScape in patent infringement lawsuit involving patents directed to the generation and use of encrypted launch codes.

Datatreasury Corp. v. Austin Bancorp, Inc., et al. (E.D. Tex. [Tyler]-pending). JW represents four defendant banks in a patent infringement case related to the electronic imaging and transmission of financial transaction documents.

Soverain Software LLC v. J.C. Penney Corp., et al. (E.D. Tex. [Tyler]). Counsel for QVC in a patent infringement lawsuit involving patents directed to methods of completing sales over the internet. JW’s clients settled on favorable terms.

Balthaser Online, Inc. v. Network Solutions, LLC, et al. (E.D. Tex. [Marshall] and N.D. Cal.); Balthaser Online, Inc. v. Kimberly-Clark Corporation, et al. (E.D. Tex. [Marshall]). Counsel for six defendants in two lawsuits alleging that various web sites infringe the plaintiff’s patent. Obtained a transfer to the Northern District of California in Network Solutions and negotiated an early, favorable global settlement for all our clients prior to the claim construction hearings in both cases.

Orion v. Xerox Corporation, et al. (E.D. Tex. [Tyler]). JW represented Nordstrom, Inc., Kohl’s Department Stores, Inc. and Walgreen Co. in this patent infringement suit about a computer assisted parts sales method and an electronic proposal preparation system. JW obtained a favorable settlement on behalf of its clients.

Orion v. Costco Wholesale Corporation, et al. (E.D. Tex. [Tyler]). JW represented Costco in this patent infringement action about two business method patents by Costco’s websites. JW obtained a favorable settlement for its client.

Voxpath RS, LLC v. LG Electronics U.S.A., Inc., et al. (E.D. Tex. [Marshall]). Jackson Walker represented Denon Electronics (USA), LLC and D&M Holdings, Inc. in a patent infringement lawsuit concerning optical data reproduction devices. Settled on favorable terms.

Voxpath RS, LLC v. Denon Electronics (USA), LLC, et al. (E.D. Tex. [Marshall]). Jackson Walker represented Denon Electronics (USA), LLC and D&M Holdings, Inc. in a patent infringement lawsuit involving the alleged infringement of a patent directed to optical recording and playback systems. Settled on favorable terms.

Datatreasury Corp. v. Wells Fargo & Co., et al. (E.D. Tex. [Marshall]). JW represented HSBC Bank USA in a patent infringement case related to the electronic imaging and transmission of financial transaction documents. JW obtained a favorable settlement for its clients.

NextCard, LLC v. American Express Company, Discovery Financial Services LLC, HSBC North America Holdings Inc., HSBC USA, Inc., and The PNC Financial Services Group, Inc. (E.D. Tex. [Marshall]). JW served as counsel for Defendants HSBC North America Holdings and HSBC USA Inc. in a patent infringement case related to online chat help and online credit card applications. JW’s clients settled on favorable terms.

Mobility Electronics, Inc. v. Formosa Electronics, et al. (E.D. Tex. [Texarkana]). After initiating suit before the ITC, Mobility Electronics, JW’s client, then brought an infringement and trade secrets misappropriation case against a Taiwanese manufacturer of power supplies for electronic devices. Following a Markman hearing, the court issued a claim construction order construing the vast majority of claims in Mobility’s favor. Mobility settled its claims against all five defendants on favorable terms.

Datatern, Inc. v. Bank of America Corporation, et al. (E.D. Tex. [Texarkana]). JW represented QVC concerning a patent directed to a system for enabling access to a relational database. JW obtained a favorable settlement for its client.

— Client Results

Jackson Walker Obtains Attorneys’ Fees Award In Patent Infringement Case

— Spotlight

Intellectual Property Practice Wraps Up Big Year

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Matt Acosta to Speak on Patent Infringement for Dallas Bar Association

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Jackson Walker Lands Six IP Litigators in Houston

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Chris Rourk Discusses Counterfeiting and Grey Market Sales in Asia IP

— Mentions

D CEO Quotes Chris Rourk on the Impact of the America Invents Act

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Jackson Walker Wins Cases Based On § 101 Patent Ineligibility

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Chris Rourk Comments on Patent Protection for Artificial Intelligence Innovations in Asia IP

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Chambers USA Recognizes Jackson Walker Attorneys and Practices

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David Folsom Named Intellectual Property Trailblazer by National Law Journal

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Stephanie Chandler to Receive 2017 Women’s Leadership Award from the San Antonio Business Journal

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American Lawyer Names Jackson Walker a ‘Top Firm’ for Diversity

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53 Jackson Walker Attorneys Named to 2017 ‘Texas Super Lawyers’ List

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Nate St. Clair Speaks on Patent Trolls at PRINT 17

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Chris Rourk Speaks on Administrative Law for Dallas Bar Association’s IP Law Section

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Chris Rourk Comments on Patent Eligibility in Asia IP

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Three Jackson Walker Partners Included in D Magazine’s “Best Lawyers Under 40” List

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Nate St. Clair to Speak at Marquette University Law School Banquet

— Mentions

‘Law360’ Quotes Wasif Qureshi on Impact of TC Heartland Decision

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Nate St. Clair Admitted to the Texas Bar College

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Mark Miller Joins SABJ List of 2016 Outstanding Lawyers

— Client Results

Jackson Walker Attorneys Win Summary Judgment on Patent Infringement

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Law360 Recognizes Jackson Walker Team as 'Legal Lions' For PTAB Reversal

— Client Results

Jackson Walker Prevails with Federal Circuit Victory, Reverses PTAB in IPR Appeal

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Matt Acosta Becomes a Barrister Member of the Honorable Barbara M.G. Lynn American Inn of Court

— Mentions

Chris Rourk Quoted on Trademark Applications and Registration Amendments

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Wasif Qureshi Named to the 2016 IP Patent Star list by 'Managing Intellectual Property'

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Jackson Walker Welcomes Wasif Qureshi

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Chip Babcock: Committed to Clients

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Follow Jackson Walker on Twitter

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Wasif Qureshi Named to the 2016 IP Patent Star list by ‘Managing Intellectual Property’

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Jackson Walker Attorneys Honored by Texas Bar Foundation

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Chris Rourk Delivers Presentation on Trademark, Copyright and Licensing for Engineers to IEEE Dallas

— Client Results

Bob Latham Quoted in 'Texas Lawyer' on Anti-SLAPP Victory

— Attorney News

Chris Rourk Quoted on NPEs and Patents in 'Asia IP' Article

— Attorney News

Stacy Allen and Emilio Nicolas Speak on 'Hot Topics in Video Game Law'

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Jackson Walker Successfully Defends Oprah in Trademark Suit over 'Own Your Power'

— Attorney News

Patty Tomasco Speaks on Valuation of Intellectual Property

— Spotlight

Jackson Walker Congratulates Its 32 'Super Lawyers - Rising Stars'

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Jonathan Lass to Speak on Technology and Intellectual Property Transactions at UT School of Law's 28th Annual Technology Law Con

— Attorney News

John Jackson Appointed to ABA Wine Community Texas Director Position

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Patricia Tomasco Speaks on Intellectual Property Licensing Agreements and Bankruptcy

— Client Results

Jackson Walker Invalidates Patent and Disposes of Associated Patent Litigation

— Attorney News

Jonathan Lass Quoted in 'Austin Business Journal' Article Regarding His Tech Transaction Presentation

— Attorney News

Emilio B. Nicolas Elected to the Copyright Society of the USA Board of Trustees

— Spotlight

S.A. Scene's 2015 "Best S.A. Lawyers"

— Press Releases

Jackson Walker Featured in 'Law360' as a Texas Powerhouse Firm

— Client Results

Jackson Walker Represents Freeman Group in Series A Investment in Pixia Corp.

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Jackson Walker Attorneys Chair the Texas Chapter of the Copyright Society of the USA

— Spotlight

Jackson Walker Congratulates Its Best Lawyers in America 2016

— Attorney News

Patty Tomasco Speaks on Intellectual Property Issues in Bankruptcy

— Press Releases

Bob Latham Speaks on Dale Hansen Show

— Press Releases

Stephanie Chandler Selected as San Antonio Mentor for Nationwide "Bizwomen Mentoring"

— Press Releases

Chris Rourk Featured on 86 Pillars Blog

— Press Releases

Jackson Walker Client Featured in 'USA Today' Article on Podcasting Patent Battle

— Press Releases

Chris Rourk Quoted in 'Asia IP' on IP Enforcement

— Press Releases

Coming Up: Stephanie Chandler and Mike Meskill Speak at IPO Boot Camp in Dallas

— Press Releases

Jonathan Lass Speaks at the University of Texas School of Law Technology Conference

— Spotlight

Jackson Walker Congratulates Its Best Lawyers in America 2015

— Attorney News

Dan Chapman Featured in 'Texas Bar Journal' on Lifetime of Thrill

— Press Releases

Bob Latham Quoted in 'NZ Rugby World' on Upcoming Rugby Match

— Press Releases

Emilio Nicolas Elected to the American Bar Association's Intellectual Property Litigation Committee

— Press Releases

David Folsom Speaks at Paragraph IV Disputes Workshop

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Jackson Walker Obtains Dismissal of Patent Litigation Suit Involving Podcasting Patent

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San Antonio Jackson Walker Women Receive ATHENA Organizational Leadership Award

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San Antonio Scene’ Recognizes All San Antonio Attorneys in “Best Lawyers” List

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Leisa Talbert Peschel Discusses Extraterritorial Reach of Patents

— Mentions

Bob Latham Shares Insights About Conor McGregor Court Hearing

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Internet of Things Part 2: Dogs, Cameras, and Cybersecurity

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The Supreme Court Has Blessed International Lost Profits

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Ex Parte Reexamination May Cost Apple $177 Million

— Client Results

Jackson Walker Coordinates Deal to Transform Dell Diamond Into Major Filming Location for ‘Fear the Walking Dead’

— Insights

First Amendment Watchdogs Warily Regard Passage of FOSTA

— Insights

Supreme Court Confirms the Constitutionality of Inter Partes Review

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The Facts in the “Abstract”

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The 10 Attorney Types at IP Conferences

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Absolute Intervening Rights: Maximizing the Impact of Post-Grant Challenges

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Chip Babcock Receives 2018 Karen H. Susman Jurisprudence Award

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Texas Law Firm Jackson Walker Elects 6 New Partners

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Using Supplier Agreements as Patent Litigation Insurance

— Mentions

Shannon Teicher Discusses Supreme Court Nominee on WFAA-TV

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Supreme Court Rules Doctrine of Laches Does Not Bar Damages In Patent Litigation

— Mentions

Nate St. Clair Named ‘Printing Industry Hero’ by Intellectual Property Expert

— Attorney News

36 Jackson Walker Attorneys Recognized in S.A. Scene’s 2017 Best Lawyers List

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Upon Further Review: Supreme Court Ruling Means “Redskins” Trademark Registrations Are Still In Play

— Insights

Supreme Court Holds Sale of Patented Product Exhausts All Patent Rights

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SCOTUS Simplifies Market Entry Process for Biosimilar Products

— Attorney News

Jonathan Lass Speaks at UT School of Law’s 30th Annual Technology Law Conference

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Asia IP Quotes Chris Rourk on Strategies to Solve Patent Disputes Out of Court

— Attorney News

Nate St. Clair Selected to Join Dallas Regional Chamber’s Leadership Dallas Program

— Spotlight

BTI Lists Jackson Walker in Report on Firms with the Best Collaboration

— Press Releases

Jackson Walker Continues to Expand in Austin, Dallas, and Houston with Four Partner Hires

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Bob Latham Speaks on Privacy at Media Law Conference in London

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Virginia Law School Announces 28th Recipient of Jackson Walker LLP Award

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Last Call: Your Q4 DMCA Agent Designation Reminder

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Intellectual Property Basics

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Stacy Allen, Bob Latham, and Paul Watler Represent Media Law Group at TAB Awards Gala

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Chris Rourk Writes for ‘Law360’ on Design Patent Confusion in Federal Circuit’s Maatita Ruling

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Internet of Things: What Is It and Why Do I Care?

— Insights

Internet of Things Part 3: How Your Smart Toothbrush Is An Idea Worth Protecting

— Client Results

Chip Babcock and Nancy Hamilton Obtain Dismissal in Defamation Suit Against CBS Studios, Inc.

— Insights

So Far, So Good? The DMCA Safe Harbors at Twenty

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Matt Acosta Presents Two-Hour CLE Program on The Internet of Things

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Leisa Talbert Peschel Participates in Panel Discussion at Eastern District of Texas 2018 Bench Bar Conference

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Matt Acosta Moderates Panel at Eastern District of Texas Bench Bar Conference

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Bob Latham Fields Questions in MLRC MediaLawLetter Q&A

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Copyright Infringement

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The Top 10 Things You Wanted to Know About False Patent Marking but Were Afraid to Ask

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The Madrid Protocol: Providing International Trademark Registration

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You did what? Potential Pitfalls for the Franchisor

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Arithmetic 101 for Prospective Franchisees

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Eastern District of Texas Presents David Folsom With 2018 John Hannah, Jr. Award for Public Service

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Understanding The First Amendment

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Houstonia Magazine Recognizes 10 Jackson Walker Attorneys as “Top Lawyers” in Best of Houstonia