Overview

Greg represents and advises companies in all aspects of patent, copyright, and trade secret law. His 30 years of experience includes acting as lead counsel in jury trials and preliminary injunction hearings, counseling Fortune 500 clients on the creation and management of patent portfolios, designing around competitor patents, leading IP due diligence teams for major M&A transactions, and participating in contested patent office proceedings such as inter partes reviews and reexaminations. IAM Patent notes that Greg “obtains meaningful patent protection for huge industry players and adroitly manages large portfolios” (2023) and has called him “a versatile professional” with an ability to “cross[] technical divides with agility” (2022).

Over the years, Greg has litigated cases in a range of IP practice areas and related to diverse technologies—from oil field tools to polymers, to telecommunications, to pharmaceuticals, and more. For example, he defended Imaging Solutions of Australia against a multi-million dollar copyright infringement claim, first obtaining summary judgment on all plaintiffs’ claims and then obtaining a jury verdict and substantial award on the client’s counterclaims. He also defended Dyna-Drill Technologies in a 13-day jury trial against a damages claim of nearly $60 million for alleged trade secret misappropriation, tortious interference, and breach of contract.

Greg also drafts and prosecutes chemical, oil field, and biotech patents, practicing before the US Patent and Trademark Office (USPTO) and Patent Trial and Appeal Board (PTAB).

Experience

US Court of Appeals, Federal Circuit

  • Owens Corning v. Fast Felt Corporation, No. 16-2613 (Fed. Cir. 2016). Counsel for appellee / patent owner Fast Felt Corporation.
  • Energy Heating, LLC v. Heat On-the-Fly, LLC, Nos. 16-1559, 16-1893, and 16-1894 (Fed. Cir. 2016). Counsel for appellant / cross-appellee Heat On-the-Fly.
  • Dow Chemical Co. v. Sumitomo Chem. Co., 257 F.3d 1364 (Fed. Cir. 2001) and Dow Chemical Co. v. Sumitomo Chem. Co., No. 96-10330, Eastern District of Michigan, Bay City (Judge Roberts). Represented patentee in obtaining large settlement after four reexaminations and appeal in which the court found in our client’s favor.

US District Courts

  • Magnacross LLC v. AT&T Mobility LLC, No. 2:15-cv-844-JRG (lead case) (consolidated), Eastern District of Texas, Marshall Division (Judge Gilstrap). Defended against patent infringement claims. Case settled.
  • Chase Boards, LLC and Fiik Skateboards, LLC, v. Maverix USA LLC, No. 15-cv-61872, Southern District of Florida, Ft. Lauderdale Division. Defended against patent infringement claims. Case settled.
  • Fast Felt Corp. v. Owens Corning Roofing & Asphalt, LLC, et al., No. 14-cv-00803, Northern District of Ohio, Western Division. Asserted patent infringement claim.
  • Eclipse Group LLP, v. Fortune Mfg. Co., No. 14-cv-0441, Southern District of California (Judge Curiel). Represented defendant against breach of contract, open book account, account stated, and quantum meruit claims. Removed default judgment entered against defendants, had case retained on the court’s docket, and convinced the court to deny plaintiff’s summary judgment motion. Case settled.
  • Egyptian Goddess, Inc. v. Dermalactives, Inc., No. 4:12-cv-00769, Eastern District of Texas, Sherman Division (Judge Schell). Defended against design patent infringement claim. Case settled.
  • MacroNiche Software, et al. v. Imaging Solutions of Australia, et al., No. 4:12-cv-02293, Southern District of Texas, Houston Division (Judge Hittner). Defended against software copyright infringement claim. Obtained summary judgment on copyright infringement claims and, at trial, convinced jury trial to award substantial monetary judgment on client’s counterclaims.
  • Kraton Polymers US LLC v. LCY Elastomers L.P., No. 12-cv-01784, Southern District of Texas, Houston Division (Judge Atlas). Asserted patent infringement claim. Case settled.
  • Dresser-Rand Company v. Schutte & Koerting Acquisition Co., et al., No. 4:12-cv-184, Southern District of Texas, Houston Division (Judge Miller). Defended against claims of trade secret misappropriation, copyright infringement, and numerous other claims.
  • Emtel, Inc. v. MedAire, Inc., No. 4:11-cv-03007, Southern District of Texas (Judge Atlas). Asserted patent infringement claim. Case settled.
  • Visual Interactive Phone Concepts, Inc. v. AT&T Mobility, LLC, No. 1:11-cv-03960, Northern District of Georgia, Atlanta Division (Judge Story). Defended against patent infringement claim. Case dismissed.
  • Rydex, Ltd. v. General Motors LLC, et al., No. 4:11-cv-00122, Southern District of Texas, Houston Division (Judges Ellison, Gilmore, Miller, and Werlein, Jr.). Defended against claims of patent infringement.
  • Rydex, Ltd. v. Mastercard, Inc. and VISA, Inc.; No. 4:10-cv-267, Southern District of Texas, Houston Division (Judge Rosenthal). Defended against claims of patent infringement. Case settled.
  • Frans Nooren Afdichingssytemen B.V. and Stopaq B.V. v. Stopaq Amcorr Inc. d/b/a AMCORR Products and Services and Dolphin Sealants, LLC, No. 4:10-cv-3150, Southern District of Texas, Houston Division (Judge Hughes). Represented Stopaq B.V. and Nooren in a patent and trademark infringement action; products at issue pertained to anti-corrosion preparations that could be used on oil and gas pipelines.
  • Chevron U.S.A. Inc. v. Competitor, No. 4:10-cv-01787, Southern District of Texas, Houston Division (Judge Rosenthal). Represented Chevron in obtaining a temporary restraining order against another entity, preventing disclosure of trade secrets related to proprietary software program for interactive modeling, inversion, and interpretation of responses from various logging tools in different oil and gas formation environments.
  • PlanDraft, Inc. v. Providian Manor Homes, L.P., et al., No. 4:10-cv-03739, Southern District of Texas, Houston Division (Judge Hittner). Defended against claims of copyright infringement. Case settled.
  • O&G Searchquest v. Proctor & Gamble Company, et al., No. 4:10-cv-00974, Southern District of Texas, Houston Division (Judge Gilmore). Defended against claims of false patent marking. Case dismissed.
  • O&G Searchquest v. Proctor & Gamble Company, et al., No. 4:10-cv-01164, Southern District of Texas, Houston Division, (Judge Atlas). Defended against claims of false patent marking. Case dismissed.
  • Georgia-Pacific Gypsum, LLC v. New NGC, Inc., No. 4:08-cv-00166-HCM, Northern District of Georgia, Rome Division (Judge Murphy). Represented patentee in patent infringement case. Case settled.
  • Baker Hughes, et al. v. PathFinder Energy Servs., Inc., et al., No. 07-02623, Southern District of Texas, Houston Division (Judge Gilmore). Defended PathFinder Energy and three of its employees against claims including trade secret misappropriation, breach of contract, tortious interference, breach of fiduciary duty, and the Computer Fraud and Abuse Act. Case settled.
  • Emtel, Inc., v. Lipidlabs, Inc., et al., No. 07-cv-01798, Southern District of Texas, Houston Division (Judge Rosenthal). Asserted patent infringement claim. Case settled.
  • Negotiated Data Solutions LLC v. Dell, Inc., No. 2:06-cv-528 (TJW), Eastern District of Texas, Marshall Division (Judge Ward). Represented Dell in a patent infringement case related to network data transmission technology.
  • Scientific Drilling International, Inc. v. PathFinder Energy Servs., Inc., et al., No. H-06-1634, Southern District of Texas, Houston Division (Judge Hittner), after removal. Defended PathFinder Energy and four of its employees against a damage claim of over $250 million for alleged misappropriation of trade secrets and confidential information, tortious interference, and breach of fiduciary duty. After obtaining summary judgment on a breach of contract counterclaim on behalf of the four employees, the case settled favorably.
  • Stinger Wellhead Protection, Inc. v. Boyd’s Bit Service, Inc., et al., No. 2005CVF000224D3 in 341st District Court, Webb County, Texas (Judge Ender). Defended Boyd's Bit Service and its employee against 10 causes of action including trade secret misappropriation, breach of contract, tortious interference, fraud, and breach of fiduciary duty. Took case over from another firm and obtained reversal of a prior "death penalty" sanction. Case settled.
  • Minka Lighting Inc. v. Trans Globe Imports, et al., No. 2:03-cv-04096, Central District of California, Western Division, Los Angeles (Judge Fischer). Represented owner of design patents. Case settled.
  • Minka Lighting Inc. v. Trans Globe Imports, et al., No. 5:03-cv-00789, Central District of California, Eastern Division, Riverside (Judge Phillips). Represented owner of design patents. Case settled.
  • Bel Air Lighting Inc. v. Minka Lighting Inc., No. 5:03-v-00126, Central District of California, Eastern Division, Riverside (Judge Phillips). Represented owner of design patents. Case settled.
  • Dyna-Drill Techs., Inc., et al. v. Kennametal d/b/a Conforma Clad, Inc., No. H-03-0599, Southern District of Texas, Houston Division (Judge Ellison). Defended Dyna-Drill against a damages claim of nearly $60 million for alleged trade secret misappropriation, tortious interference, and breach of contract. After a 13-day trial, convinced the jury to find that Dyna-Drill owed no damages and had independently developed its tungsten carbide coatings used on radial bearings for downhole mud motors for oil and gas drilling.
  • Robert Wyne v. Medo Indus. Inc., No. 1:02-cv-01812-RBD, District of Maryland, Baltimore (Judge Bennett). Defended Medo Industries against claims of trade secret misappropriation. Obtained summary judgment and affirmed on appeal.
  • Urologix Inc. v. ProstaLund Operations AB, et al., No. 02-00318, Eastern District of Wisconsin (Judge Adelman). Defended against patent infringement claims and motion for preliminary injunction. Obtained summary judgment invalidating the patent.
  • Auto Wax Co. v. Mark VProducts, Inc., No. 99-00982, Northern District of Texas (Judge Lynn). Represented patent and trademark owner. Obtained large jury verdict and treble damages after a 13-day jury trial.

Inter Partes Review

  • Inter Partes Review (PTAB-IPR2016-01686) of US Patent No. 9,393,648 entitled “Undercut Stator for a Positive Displacement Motor.” Settled the proceeding on behalf of the petitioner.
  • Inter Partes Review (PTAB-IPR2015-00650) of US Patent No. 8,137,757 entitled “Print Methodology for Applying Polymer Materials to Roofing Materials to Form Nail Tabs or Reinforcing Strips.” Represented patent owner. Convinced the PTAB to uphold all claims.
  • Inter Partes Review (PTAB-IPR2015-00256) of US Patent No. 7,323,980 entitled “Security System and Method With Realtime Imagery.” Represented Petitioner. Case settled.
  • Inter Partes Review (PTAB-IPR2014-00676) of US Patent No. 8337856 entitled “Methods of Treatment Using Anti-ERBB Antibody-Maytansinoid Conjugates.” Represented petitioner

Reexamination

  • Reexamination (Control No. 90/013,117) of US Patent No. 7,968,660 entitled “Polymer-based composites comprising carbon nanotubes as a filler, method for producing said composites, and associated uses.” Represented Third-Party Requestor. The reexamination forced the patentee to amend the patent claims in a manner favorable to client.
  • Reexaminations (Control Nos. 90/005,402; 90/005,313; 90/005,132; and 90/004,973). Represented Patentee. All reexamined claims of the client’s patent were determined patentable and reexamination certificates were issued


Accolades

Honors & Recognitions

  • Recommended for Patent Prosecution and Patent Transactions in Texas in the IAM Patent 1000 (2019-2023), Intellectual Asset Management
  • Recognized as a Patent Star in the IP STARS Handbook (2021-2023), Managing Intellectual Property
  • Recommended for Patents: Licensing (2018, 2020-2021), Patents: Prosecution (2017-2018), and Patents: Litigation (Full Coverage) (2017-2018), Legal 500 United States
  • Named a Best Lawyer in Patent Law and Trade Secrets Law (2024), The Best Lawyers in America
  • Recognized as a Texas Super Lawyer in IP Litigation (2017-2019) and Intellectual Property Law (2013-2016), Super Lawyers by Thomson Reuters (published in Texas Monthly)
  • Recognized for Intellectual Property in Who’s Who in Law (2015), Houston Business Journal

Affiliations

Professional

  • Fellow, Texas Bar Foundation
  • American Chemical Society
  • American Intellectual Property Law Association
  • Intellectual Property Owners Association
  • Houston Intellectual Property Law Association
  • Houston Bar Association

Insights

Events & Speaking Engagements

Publications

Blog Posts

News

Education

JD, Capital University, cum laude, 1994

BS, Chemistry, Indiana University, with honors, 1991

Admissions

Texas

Michigan

US Patent and Trademark Office

Courts

US Court of Appeals, Federal Circuit

US Court of Appeals, Fifth Circuit

US District Court, Eastern District of Texas

US District Court, Northern District of Texas

US District Court, Southern District of Texas

US District Court, Eastern District of Michigan

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