Brian C. Banner

Shareholder

ADMISSIONS:

State Bar of Texas

U.S. Court of Appeals for the Federal Circuit

U.S. District Courts

Western District of Texas

Eastern District of Texas


Practices

Intellectual Property Litigation

United States Patent & Trademark Office Practice

Strategic IP Counseling & Portfolio Management

Licensing, Monetization & Technology Transactions

Entertainment & Media Law


Technologies & Industries:

Automotive

Business Method Patents

Consumer Products

Electronics & Robotics

Electrical and Computer Technology

Financial Services

Industrial Machinery and Heavy Engineering

Media & Entertainment

Oil & Gas

Software/IT

Sourcing and Technology

Semiconductor and Integrated Circuits

Telecommunications


Education:

J.D., University of Texas
with Honors

Executive Editor, Texas
Intellectual Property Law Journal

B.S., Electrical & Computer Engineering, Carnegie Mellon University, Pittsburgh

 

Summary

Brian C. Banner provides legal services to clients in matters relating to patents, copyrights, trademarks, and technology licensing, with a primary focus on patent litigation.  Brian’s technical background in electrical and computer engineering spans digital circuit design, simulation, and verification; computer networking; computer architecture; software development; web development; and database architecture and administration.

Brian frequently handles cases in federal district courts in Texas and across the country, the U.S. Court of Appeals for the Federal Circuit, and before the U.S. International Trade Commission and the U.S. Patent and Trademark Office.  Brian has litigated patent disputes involving a wide range of technologies.  He represents both companies seeking to enforce their intellectual property rights and those accused of infringement.

Brian also assists in preparing and prosecuting patent applications covering a broad spectrum of inventions, including semiconductor devices and processing technologies, human-computer interaction, distributed computing environments, networking systems, graphical user interfaces, and business process automation.


Industry Experience

Prior to attending law school, Brian worked for eight years as an embedded processor design engineer at Motorola/Freescale Semiconductor, Inc., in Austin, where he focused on the design and verification of integrated circuits for imaging, networking, and control applications.  Brian also worked as a consultant for a number of Austin start-up companies, providing web hosting and development services as well as database architecture and administration.


Representative Clients

Transactional

Performed patent due diligence for multiple product line clearances covering United States patents for a number of varying technologies, most notably in fields of touch-screen based electronics.


Litigation

Oracle America, Inc. v. Google, Inc. (Fed. Cir.) – representing Google in appeal filed by Oracle after Google successfully invalidated Oracle’s patent in inter partes reexamination proceeding.

Keranos, LLC v. Silicon Storage Technology, et al. (Fed. Cir.) – representing “who’s who” of the semiconductor industry (e.g., Microchip Technology, Inc., Silicon Storage Technology, Inc., Intel Inc., Freescale Semiconductor, Inc., Analog Devices, Inc., Texas Instruments, Inc., Taiwan Semiconductor Manufacturing Co., Ltd., Samsung Electronics Co., Ltd., etc.) in appeal filed by plaintiff Keranos, LLC, after defendants won in district court action.

Lucky Litter, LLC, et al. v. Applica Consumer Products (Fed. Cir.) – representing Applica Consumer Products in appeal filed by Lucky Litter et al. after Applica successfully obtained exclusion order in proceedings before the  International Trade Commission.

Oracle America, Inc. v. Google Inc. (N.D. Cal.) – represented Google in high-stakes patent and copyright litigation.  The lawsuit was brought by Oracle based on Java technology-related patents and copyrights it acquired from Sun Microsystems in 2010.  The Court dubbed the suit the “World Series of IP,” as the case involved allegations of infringement of seven patents and various copyrights, with Oracle’s expert estimating damages as high as $6 billion.  Won key victories prior to trial, including significant limitations on damages and the dismissal of five of the seven patents based on successful reexaminations at the U.S. Patent & Trademark Office.  At trial, the jury rejected all remaining claims of patent infringement and found copyright infringement of only de minimus value.  The results are considered a sweeping victory, with essentially zero damages.

Keranos, LLC v. Analog Devices, Inc. (E.D.Tex.) – representing “who’s who” of the semiconductor industry (e.g., Microchip Technology, Inc., Silicon Storage Technology, Inc., Intel Inc., Freescale Semiconductor, Inc., Analog Devices, Inc., Texas Instruments, Inc., Taiwan Semiconductor Manufacturing Co., Ltd., Samsung Electronics Co., Ltd., etc.), defending against patent infringement allegations related to flash memory.  Obtained favorable Markman Order, prevailing on 13 of 15 claim terms in dispute.  Won key victory prior to trial that resulted in dismissal of all claims against every represented defendant.

MCU Clocking Solutions, Inc. v. Microchip Technology, Inc. (D.Del.) – representing Microchip in a suit alleging infringement of a patent on a circuit and method of detecting and selecting clock source.

Luciano F. Paone v. Microchip Technology, Inc. (E.D.N.Y.) – representing Microchip in a suit alleging infringement of patents on encryption methods and systems.

Gordium Innovations v. Standard Microsystems Corporation (D.Del.) – representing Standard Microsystems Corporation in a suit involving a patent on a method and an apparatus for reducing latency delay associated with converting asynchronous serial digital data to packet data.

Lodsys, LLC. v. Motorola Mobility LLC (E.D.Tex.) – representing Motorola Mobility in patent infringement dispute against wholly owned subsidiary of well-known non-practicing entity (Intellectual Ventures).  Suit involved a patent on systems and methods of using user feedback to improve an electronic device.

Parallel Separations Innovations LLC v. Schlumberger Limited (E.D.Tex.) – representing Schlumberger in patent infringement dispute against wholly owned subsidiary of well-known non-practicing entity (Acacia).  Suit involved a patent on a shale shaker apparatus.

Applica Consumer Products, Inc. v. PetSmart, Doskocil, PetCo, and OurPets (EDTX) – representing patent owner (Applica) in multiple suits enforcing a home appliance patent.

In the Matter of Certain Self-Cleaning Litter Boxes and Components Thereof (U.S.I.T.C.) – representing patent owner (Applica) in proceedings before the U.S. International Trade Commision.