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Paul N. Katz

Counsel

ADMISSIONS:

State Bar of Texas

U.S. Patent and Trademark Office

U.S. Court of Appeals for the Federal Circuit

U.S. District Court

Eastern District of Texas


Practices

Patent Prosecution

Patent Litigation Support


Technologies & Industries:

Electronics Analog and Digital

Electrical and Computer Technology

Semiconductor and Integrated Circuits

Telecommunications

Electrical Power and Control Systems


Education:

J.D.,  South Texas College of Law (1989)

STCL Law Review, Assistant Editor

Master of Electrical Engineering, University of Houston

B.S. Electrical Engineering,
University of Houston

Experience

Paul N. Katz has over 25 years as a practicing Intellectual Property attorney specializing in patent application drafting and prosecution.  He has provided file wrapper, claim chart and prior art analysis in support of highly technical and complex patent litigation and in opinions.  He was an adjunct professor and taught patent application drafting and prosecution; and patent, copyright and computer law at South Texas College of Law for 22 years.


Industry Experience

Before becoming an intellectual property attorney, Mr. Katz was an electrical engineer for 17 years designing power and control systems for chemical refineries, oil and gas industrial plants, well logging and seismic instrumentation, and worldwide radio communications systems.  He also did two semesters of engineering cooperative education at the Manned Spacecraft Center (NASA) during the Apollo missions and first moon landing (1969-70).


Publications and Presentations

Paul N. Katz & Robert R. Riddle, Designing Around a United States Patent, 45 S. Tex. L. Rev. 647 (2004).

Paul N. Katz, The Doctrine Of Equivalents and Its Impact On “Designing Around,” 4 FED. CIR. B.J. 315, 315–16 (1994).

Paul N. Katz, The Federal Circuit, in Determining Whether Patent Infringement Exists, is Divided Over Whether to Utilize “As-A Whole” or “Element-By-Element” Analysis When Applying the Doctrine of Equivalents, 30 S. TEX. L. REV. 441 (1989).

Paul N. Katz, A Crystal Ball for Writing Patent Applications, (2004) given at Intellectual Property continuing legal education seminars.