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Richard S. Zembek

Head of Technology and Innovation, United States

Richard S. Zembek

Houston

T:+1 713 651 5283

Richard Zembek's practice centers on intellectual property disputes. He defends clients across the country, and he helps companies protect, license, monetize, and enforce patents. His work focuses on telecommunication, computer, semiconductor, e-commerce, and Internet technologies, and he has tried both jury and arbitration cases. He has also handled significant matters involving industry standards and related IPR Policies, multiple defendants, and MDL proceedings.

Richard routinely counsels clients outside of the courtroom.  His broad-based transactional experience includes representation of intellectual property holders, acquirers, and licensors in the preparation and negotiation of intellectual property acquisition agreements, patent licenses, technology transfers, non-disclosure agreements, and software development, license, and maintenance agreements. He leads due diligence for and counsels clients securing, managing, and maximizing profit from intellectual property rights. He also routinely assists clients in evaluating the intellectual property of others, conducting both freedom to operate evaluations and intellectual property due diligence.

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  • Education

    1996 - J.D., Vanderbilt University School of Law
    1992 - B.S., cum laude, Electrical Engineering, Union College

    Richard is a member of Tau Beta Pi National Engineering Honor Society, Eta Kappa Nu Electrical and Computer Engineering Honor Society and Sigma Xi Scientific Research Society. 

    He was admitted to practice law in Texas in 1996 and as a patent attorney before the United States Patent and Trademark Office in 1998. He is also admitted to practice in the U.S. Court of Appeals for the Federal Circuit and the United States District Courts for the Southern, Northern, Eastern, and Western Districts of Texas.

     

  • Representative experience

    Litigation Matters

    • Represented leading television and computer manufacturers as co-counsel in a patent infringement action concerning image compression techniques. The patentee brought claims in the Eastern District of Texas against dozens of major manufacturers in the electronics and software industry. Following a favorable Markman ruling, the case favorably settled.
    • Represented wireless technology company as co-counsel in an arbitration action filed by its licensee. The licensee disputed whether certain events triggered its royalty payment obligations and claimed that differences between its and the third party's products precluded the triggering of its payment obligations. Following the prehearing submission of multiple technical expert witness statements, a two-week arbitration hearing and post-hearing briefing, the Tribunal established royalty rates applicable to licensee's covered products and the case favorably settled.
    • Represented wireless technology company as co-counsel in a patent infringement action filed in the Eastern District of Texas. Our client asserted that the defendant's digital wireless infrastructure equipment infringes its patents. Obtained a favorable Markman ruling, and the case favorably settled on eve of trial.
    • Represented electronic fund transfer association as co-counsel in the defense of patent infringement, copyright, trade secret, contract and state law claims concerning fraud detection and neural network technology. Successfully moved to submit non-federal claims to arbitration and preserved defendant's choice of forum. Case settled through a negotiated agreement after the court issued a favorable Markman ruling.
    • Represented wireless technology company as co-counsel in a long-standing patent infringement dispute. Defendant sought a declaratory judgment that its digital wireless phones and infrastructure equipment did not infringe our client's patents and that same were invalid and unenforceable. Following the court's Markman ruling and denial of various summary judgment motions, the case favorably settled.
    • Represented telecommunications company accused of infringing four patents concerning streaming internet technology and satellite delivery technology as co-counsel. Following the filing of a motion for summary judgment of invalidity, the matter was favorably settled.
    • Represented leading television manufacturer in a patent infringement action brought against the television industry in the Eastern District of Texas as co-counsel. The case was favorably settled on the eve of trial pursuant to the terms of a confidential license agreement.
    • Represented software provider of wireless email and business solutions for mobile professionals, in a patent infringement action brought in the Eastern District of Texas as co-counsel. The patentee sought a preliminary injunction. After preparation of a detailed response, including expert reports, the case was favorably settled.
    • Represented employer as co-counsel in action seeking a temporary restraining and seizure order. Executed simultaneous multi-state, multi-location seizure against former employee and employee's new business and business associates. Following seizure, case favorably settled.  

    Transactional Matters

    • Represented wireless technology company in due diligence associated with acquisition of a digital wireless patent portfolio and subsequent efforts to further strengthen the acquired intellectual property rights.
    • Represented marine contractor and operator of offshore oil and gas properties and production facilities in freedom to operate studies and intellectual property protection and acquisition projects.
    • Represented financial services company in the review, development of strategy for protecting, extinguishing potential third party ownership claims and subsequent licensing of core intellectual property rights.
    • Represented electronic fund transfer association in outsourcing certain core processing functions, licensing and acquiring third party technology and intellectual property rights, developing intellectual property policies and procedures and freedom to operate study.
    • Represented software manufacture in the negotiation of multiple license and services agreements entered with major oil and gas producers related to managing and analyzing the workflow processes of a production oil and gas field.
  • Admissions
    • Texas State Bar License
  • Rankings and recognitions
    • IP Star, Managing Intellectual Property, 2013 - 2017
    • IAM Patent 1000 - The World's Leading Patent Professionals, Intellectual Asset Management, 2014 - 2017
    • Legal 500 US, recommended lawyer, intellectual property: patent litigation: full coverage, The Legal 500, 2014, 2016-2017
    • Texas Super Lawyer, Intellectual Property Litigation, Thomson Reuters, 2013 - 2016
    • Chambers USA, Texas: Intellectual Property, Chambers & Partners, 2010 - 2017
    • Houston's Top Lawyers, intellectual property, H Texas magazine, 2008 - 2009
    • Texas Rising Star, intellectual property litigation, Thomson Reuters, 2004 - 2009
    • The Best Lawyers in America, Best Lawyers, 2015 - 2017
    • Lawyers on the Fast Track, Houston Magazine, 2004
  • Publications
    • Co-author, "En Banc Federal Circuit Addresses 'Joint Infringement' Standard," Fulbright Briefing, September 5, 2012
    • Co-author, "'Crowd Control?'—The Federal Circuit Defines the Pre-AIA Joinder Standard for Patent Cases But Leaves the Door Open on Other Options," Fulbright Alert, May 7, 2012
    • Co-author, "Developing A Patent Monetization Program," Intellectual Property Today, October 2011
    • Contributing author, "Intellectual Property Issues in Shale - Protecting Your Intellectual Property and Avoiding Infringement," Fulbright Briefing, July 13, 2011
    • "Landmark Federal Circuit Decisions on Spoliation of Documents and Appropriate Sanctions," Fulbright Client Alert, May 16, 2011
    • "Case Study: Centillion v. Qwest,Law360, February 7, 2011
    • "Centillion Data Sys. v. Qwest: Federal Circuit Addresses 'Using' and 'Making' a System that Includes Elements in the Possession of More than One Actor," Fulbright Briefing, January 2011
    • Contributing author, Annual Review of Intellectual Property Law Developments 2006-2008, January 2009 (ABA)
    • "'Matter of First Impression' – District Court Orders Return of Sunset Royalties Paid for Patent Later Invalidated on Appeal," Fulbright Briefing, December 2008  
    • "In re Bilski – Machine-Or-Transformation Test Announced for Assessing Processes Under 101, State Street Test Overruled, and Software Left Alone," Fulbright Briefing, November 17, 2008
    • "Northern District of California Defines Preservation Obligations Regarding Claims of Patent Infringement," Fulbright Briefing, August 2008
    • "TruePosition Inc. v. Andrew Corp. – District Court Weighs in on Standard-Setting Organization Activity, ETSI IPR Policy, Equity, and Permanent Injunctions," Fulbright Briefing, August 2008
    • "Are Some Method Patents Going Out of Business? The Federal Circuit Sua Sponte Orders En Banc Hearing in In Re Bilski," Intellectual Property Counselor, No. 138, June 2008
    • "Quanta Computer, Inc. v. LG Electronics - Supreme Court Limits Patentees' Ability to Sue on Downstream Combinations," Fulbright Briefing, June 2008
    • "Southern District of Texas Adopts Local Patent Rules," Fulbright Client Alert, January 2008
    • "Innovation in the Energy Sector: Protecting and Exploiting Your Intellectual Property," Fulbright Client Alert, January 2008
  • Speaking engagements
    • "Patent Return Program: Developing a Process to Generate a Return on a Patent Portfolio Investment," Fulbright & Jaworski L.L.P. Client Seminar, Sunnyvale, California, March 2011
    • "In re Bilski What Happens Next?" Cyberlaw Section of the Houston Bar Association, Houston, Texas, January 30, 2009
    • "Handling Patent Litigation -- An In-House Perspective," Panel Moderator, Fulbright & Jaworski L.L.P. Client Seminar, Houston, Texas, November 2008
    • Co-presented with Eric Hall, "Patents & the IEEE," IEEE Houston Section Meeting, December 6, 2007
    • Co-presented with David Fox, Gino Catena, "MedImmune: The Case, And Its Possible Affects On Licensing," SanDisk: Licensing In The Post-MedImmune Age: Approach With Extreme Caution, Client Web Seminar, May 10, 2007
  • Memberships and activities
    • State Bar of Texas
    • Houston Bar Association
    • Houston Intellectual Property Lawyers Association
    • American Intellectual Property Lawyers Association
    • Institute of Electrical and Electronics Engineers
    • Vanderbilt Law School Annual Fund, Firm Agent
    • Union College Admissions Volunteer
  • Videos

    Learn more about Big Data and the Internet of Things

    October 2015

  • Publications

    Big Data and the Internet of Things

    The growth of Big Data and the Internet of Things is rapidly accelerating, affecting all sectors in both a technological and regulatory manner..

    February 15, 2016

    Digital risk

    Digital presence, digital technologies and data are central to all business operations today..

    February 08, 2016