Truman H. Fenton

Shareholder

ADMISSIONS:

State Bar of Texas

U.S. Patent and Trademark Office

U.S. Court of Appeals for the Federal Circuit

U.S. District Courts

Eastern District of Texas

Southern District of Texas

Western District of Texas


Practices

Intellectual Property Litigation

United States Patent & Trademark Office Practice

Strategic IP Counseling & Portfolio Management

Domain Name Disputes

Technology Law


Technologies & Industries:

Automotive

Business Method Patents

Consumer Products

Electrical and Computer Technology

Medical Device

Software/IT

Semiconductor and Integrated Circuits

Telecommunications

Utilities


Education:

J.D., with honors, The University of Texas School of Law (2007)

Administrative Editor,
The Review of Litigation

B.S., Electrical and Computer Engineering, Carnegie Mellon University 

M.S., Electrical and Computer Engineering, Carnegie Mellon University

 


Summary

Mr. Fenton provides legal services to clients in matters relating to patents, copyrights, trademarks, technology licensing, and litigation. Mr. Fenton’s technical background in electrical and computer engineering spans software engineering; digital circuit design, simulation, and testing; computer networking; computer architecture; and systems benchmarking.

In federal courts in Texas and across the country as well as before the International Trade Commission and the Patent Trial and Appeal Board, Mr. Fenton litigates patent disputes involving a wide range of technologies, from mobile devices, business methods, software systems, medical devices, and consumer products. He represents both companies seeking to enforce their intellectual property rights and those accused of violating the rights of others. He has represented joint defense groups before federal courts and including at oral argument.  He has taken depositions to develop the factual record to uncover bases and weaknesses of expert positions.  He has prepared and defended individual, corporate, and expert witnesses.

Mr. Fenton prepares and prosecutes patent and trademark applications with the United States Patent and Trademark Office covering a broad spectrum of companies and technologies.


Industry Experience

Prior to attending law school, Mr. Fenton worked for five years as a software developer, pre-sales engineer, and product manager focusing on enterprise and e-commerce software solutions for manufacturers and financial services companies. In each engagement, Mr. Fenton focused on aligning solutions with business goals and existing information technology infrastructure. 


Representative Experience

Transactional

Drafted more than twenty patent applications to develop a base portfolio for a startup networking company

Drafted and prosecuted patent applications for a Portuguese technology incubator in a variety of subject areas including augmented reality systems and firefighting safety equipment.


Litigation

Let’s Gel, Inc. v. Louis Vuitton (W.D. Tex.) – represent corporate plaintiff in suit to declare activities free and clear of trademark infringement claims

Network Signatures, Inc. v. multiple defendants (N.D. Cal. and Federal Circuit) – represented corporate defendants against a non-practicing entity with license to Navy patent; patent covers cryptography techniques applied to network data; obtained dismissal after patent found invalid in reexamination.

James M. Taylor v. International Business Machines Corporation (E.D. Tex.) – represented corporate defendant; patent covers systems and methods relating to software optimization.

Oracle America, Inc. v. Google Inc. (N.D. Cal.) – represented corporate defendant on patent issues; plaintiff originally asserted seven patents; jury found no infringement on either of the two patents asserted at trial; responsible for invalidity attack against four patents covering system security techniques and memory management including responsibility for ten expert reports by four technical experts; responsible for non-infringement defense against claims of five patents; responsible for preparing technical experts for deposition and trial testimony.

Reshare Commerce LLC v. State Farm Mutual Automobile Insurance Company (D. Minn.) – represented corporate defendant dismissed after successful claim construction arguments precluded infringement; patent covers systems and methods for retailer compensation.

TQP v. Alianz Life Insurance Company of North America et al. (E.D. Tex.) – represented corporate defendant; patent covers methods of securing communications over a network; obtained voluntary dismissal of all claims without condition.

DietGoal Innovations LLC v. Tyson Foods, Inc. (E.D. Tex.) – represented corporate defendant and joint defense group as lead counsel on claim construction; patent covered systems and methods relating to dieting and meal planning; case dismissed after all claims found invalid as directed to unpatentable subject matter.

In re Phoenix Licensing LLC Litigation (D. Ariz., Judicial Panel on Multidistrict Litigation, E.D. Tex.) – represented financial services company in preemptively suing to invalidate three business method patents and defended against a multi-million dollar patent infringement claim; patents cover systems and methods for marketing financial services products; obtained favorable settlement prior to the opening of discovery.

In the Matter of Certain Self-Cleaning Litter Boxes and Components Thereof  and related litigation (International Trade Commission, E.D. Tex., N.D. Ill.) – represented exclusive licensee of patent in obtaining a general exclusion order blocking importation of infringing automated self-cleaning litter boxes; represented exclusive licensee of patentee in various district court actions relating to trademark and patent infringement; patents covered systems and methods for automated, self-cleaning litter boxes.

Represented a large electric power consumer in state and federal court in a dispute with the Texas Public Utility Commission regarding the application and implementation of the Public Utility Regulatory Policies Act of 1978 (“PURPA”).

Represented companies to enforce trademark, patent, and copyright interests against a possibly coordinated group of online web merchants; forced transfer of domain names through arbitration proceedings under the Uniform Domain Name Resolution Protocol (UDRP); effected take-downs of infringing websites during the UDRP proceedings; investigated identities and connections between various entities in China.