Phillip Philbin is a partner, a member of the firm's Board of Directors, co-chair of the Intellectual Property Litigation Practice Group, and former chair in the firm's Business Litigation Section. He joined the firm in 1990 after serving as law clerk to the Hon. Reynaldo G. Garza, United States Circuit Judge for the Fifth Circuit Court of Appeals.
Mr. Philbin is a sought-after trial attorney whose practice encompasses a wide range of intellectual property matters, including patent, trademark, trade dress, copyright, trade secret and unfair competition. His portfolio of patent litigation experience is particularly noteworthy, having successfully tried numerous cases to juries and judges across the country. His more than 20 years of trial experience on both sides of the aisle have honed his ability to leverage trial strategy to his clients' greatest advantage, and he has positioned many cases for settlement prior to trial or after appeal.
Clients value Mr. Philbin for his ability to understand complex technology, as well as his courtroom skills. As a registered patent attorney, he is fluent in both the legal framework of patent law and the technical aspects of the patents he explains, and he deftly translates highly technical concepts for judges and juries. He incorporates all aspects of a client's case - technological, business, and legal objectives - to craft a cohesive strategy that works both in and out of the courtroom. As a result of this experience, he has played an integral role in a number of notable patent cases.
In addition to his busy trial schedule and leadership roles within the firm, Mr. Philbin is a frequent author and speaker on patent topics and serves as an adjunct professor at SMU Dedman School of Law, where he teaches a patent litigation class for which he helped develop the curriculum.
Mr. Philbin has represented inventors, authors, and innovators as either plaintiff or defendant:
- Established precedent for patent exhaustion by obtaining a summary judgment dismissal, with Federal Circuit affirmation, of a lawsuit alleging infringement of electronic highway toll collection patents in a case with broad implications both for the U.S. toll collection industry and downstream customers of licensed components.
- Obtained a final, non-appealable, take-nothing judgment against Data Treasury after a multi-week jury trial in Marshall, Texas in a lawsuit involving electronic check image processing.
- Obtained a jury verdict and judgment, including enhanced damages, attorneys fees, and a broad injunction, for the willful infringement of a patented method for surgically repairing the left ventricle of the human heart after a severe heart attack representing the inventors and their company.
- Defended multiple technology and telecommunications clients in remote data storage claims.
- Pursued invalidity and non-infringement claims for an ANDA supplier.
- Pursued an enforcement campaign for patented Web site data management techniques and patented complex computer system configurators for a major computer manufacturer.
- Successfully settled patent enforcement claims on the courthouse steps just minutes before jury selection for toy inventors.
- Defended telephone equipment manufacturer in patent infringement action involving wireless networks for mobile phones.
- Pursued an enforcement campaign for patents covering the electronic processing of call detail records.
- Defended telecommunications provider in patent infringement action involving prepaid, point-of-sale activated calling cards.
- Defended lighting manufacturer in patent and copyright infringement actions involving lamp designs.
- Defended patent infringement claims involving chemical composition of circular saw cutting tips.
- Defended various patent and trademark infringement cases involving treadmills, abdominal exercisers, and other exercise equipment.
- Represented accomplished sculptor Glenna Goodacre in the copyright enforcement campaign for the Golden Dollar featuring Sacagawea.
- Defended and prosecuted breach of contract, breach of warranty, fraud, and fraud in the inducement claims involving software licenses, development and consulting services.
- Recognized by Chambers USA - Intellectual Property in Texas (2010-2014)
- Recognized as a leading patent litigator in the 2012 and 2014 editions of Intellectual Asset Management (IAM) Patent 1000
- Selected by his peers for inclusion in The Best Lawyers in America - Intellectual Property Law (2006-2015) and Litigation - Patent (2012-2015)
- Recognized as a Best Business Lawyer in Dallas - Intellectual Property by D Magazine (2009)
- Recognized as a Texas Super Lawyer - Intellectual Property Litigation (2009-2014)
- Martindale Hubbell® Law Directory with a Peer Review Rating of AV® Preeminent™
- Patent Litigation, SMU School of Law, Fall 2012, adjunct professor
- Various CLE presentations on a myriad of patent litigation topics
- American Intellectual Property Law Association
- College of the State Bar of Texas
- Dallas Bar Association
- State Bar of Texas
- W.M. "Mac" Taylor, Jr. American Inn of Court (Barrister, 1998-2004; Master, 2004-present)
- Barbara M. G. Lynn American Inn of Court (Founding Master, 2011-present)
- The Institute for Law and Technology
- "Pre-filing Considerations in Patent Cases," 2008 Advanced Patent Law Institute at the USPTO
- "Intellectual Property Law," SMU Law Review, 2005-2011
- "Patent Law Update - The Cases That Influenced the Practice the Most," State Bar of Texas, Intellectual Property Law Seminar, March 6, 2003
Selected Representative Experience
GeoTag Inc. v. Gucci America, Inc., et al., Eastern District of Texas, 2010
Defended HRsmart and its customers against GeoTag in a major patent infringement case in the Eastern District of Texas involving job locater technology against hundreds of defendants and successfully negotiated a settlement after months of litigation.
Acquisition of Assets of Payments Nation
Represented Viewpointe Archive Services in its purchase of assets from Payments Nation.
Heart Repair Device Patent Infringement Jury Trial
A Texas jury returned a verdict affirming the validity of Haynes and Boone, LLP client Chase Medical, Inc.’s patents covering a method for surgically repairing human hearts after a severe heart attack. The verdict found not only infringement but that the infringement was willful. Jurors concluded that Chase Medical was due lost profits of $306,669 and royalty damages of $131,725 because the defendants marketed a device, “the Blue Egg,” which mimicked the Mannequin. The jury’s unanimous finding of willful infringement provided foundation for a request by Haynes and Boone attorneys for enhanced damages and attorneys fees.
Summary Judgment Defense Victory in Toll-Collection Technology Patent Case
Haynes and Boone established new precedent for patent exhaustion by obtaining summary judgment dismissal, with Federal Circuit affirmation, of a lawsuit alleging infringement of electronic toll collection patents in a case with broad implications for the U.S. toll collection industry. The case could have cost client Electronic Transaction Consultants Corporation (ETC) more than $60 million and had the potential to jeopardize the system that currently collects about 80 percent of all electronic tolls in the United States. The lawsuit was brought against ETC by TransCore, who alleged that ETC infringed four different TransCore patents that relate to the automatic electronic collection of tolls. TransCore sought more than $20 million in damages, which it sought to treble to $60 million. TransCore had alleged that ETC’s “use” of allegedly infringing toll-collection equipment infringed its patents. But the court held that TransCore’s earlier settlement with the equipment manufacturer had exhausted TransCore’s rights in the patents, and granted judgment to ETC.
Carolyn Flores v. Lowe’s Companies, Inc.
Defended copyright infringement lawsuit related to use of song in national advertising campaign.
Chase Medical v. CHF Technologies, No. 3:04-cv-02570 (N.D. Tex. 2007)
On behalf of a company that supplies products used in ventricular heart reconstructive surgery, assisted in preserving error and preparing the jury charge in a patent infringement suit, resulting in a $2 million judgment as well as an injunction against the use or sale of the infringing product.
Patent Infringement Jury Trial: Dell v. Lucent - Website Data Management and Configuration Design
In the multi-case, multi-state battle between Dell and Lucent, Haynes and Boone represented Dell in the East Texas patent infringement case involving Web-site data-management technology. Haynes and Boone tried the case to a jury for three weeks. While the jury did not find infringement, it affirmed the validity of Dell’s patents.
Copyright Litigation: the “Sacagawea” Coin
Haynes and Boone represented accomplished sculptor Glenna Goodacre, who designed the one-dollar Sacagawea coin. Haynes and Boone’s campaign forced several entities to cease producing and selling counterfeit copies of the coin.
Summary Judgment Defense Victory: Minka v. Aloha
Haynes and Boone defended a ceiling-fan manufacturer - Aloha - that had been accused of infringing utility patents, design patents, trademarks, and copyrights for ceiling fan design and packaging. After extensive discovery - including depositions throughout Asia and the United States - Haynes and Boone secured a complete summary judgment victory for its clients.
Tinkers & Chance v. Leapfrog Enterprises – Electronic Educational Devices
Haynes and Boone represented two individual inventors, successfully enforcing their patent portfolio against a leading manufacturer of educational toys. After a very favorable Markman ruling from the Marshall court, the case literally settled on the courthouse steps moments before jury selection.
06/13/2011 - The Status Quo Wins: Clear and Convincing Proof is Still Required to Invalidate Patent Claims
The Supreme Court ruled last week in Microsoft Corporation v. i4i Limited Partnership
that “clear and convincing evidence” is still the standard of proof required to invalidate a patent.
10/04/2010 - Phillip Philbin in Texas Lawyer: Double Trouble: Judge Enhances Damages in Patent Infringement Case to More Than $53 Million
Haynes and Boone Partner Phillip Philbin
comments on a patent infringement case involving Viewpointe Archive Services in The Texas Lawyer
05/13/2010 - To Have Committed Inequitable Conduct or Not? That is the Question - to be Answered
The U.S. Court of Appeals for the Federal Circuit, which hears all U.S. patent infringement appeals, issued an order on April 26, 2010 requesting briefs from the parties in Therasense, Inc. v. Becton, Dickinson, and Co.
(appeal no. 2008-1511) to consider en banc
the standards by which courts should find “inequitable conduct.”
06/06/2008 - Chase Medical Wins Patent Lawsuit Ruling
Reprinted with Permission from Dallas Business Journal
02/01/2006 - The Art of Preservation in Patent Infringement Lawsuits: The Benefits of Appellate Counsel in the Trial Court
This paper highlights the procedural steps to preserving issues for appeal in patent infringement lawsuits and provides strategical suggestions on how best to use these steps (and an appellate lawyer) during the litigation process.
07/16/2004 - Beware of Fraudulent Inducement Claims in Software Contracts
Do you think your contract is "bullet-proof?" Do you know exactly what representations your sales team is making to potential customers? What controls when the sales team promises the software "will solve all of your problems" and the contract states the software "will perform in accordance with the documentation?"
10/01/2003 - Owners of Famous Trademarks Must Prove “Actual Dilution” in Federal Trademark Dilution Act Claims
Appeared in The IP Litigator, October 2003
07/01/2002 - The Rest of the Story: The Supreme Court's Decision in Festo
Published in For The Defense magazine, July 2002
06/01/2002 - The Impact of Festo in Patent Infringement Litigation
Published in For The Defense magazine, June 2002
09/23/2001 - Spoliation of Evidence and Retention of Evidence in a High Tech World
2001 Judicial Section Annual Conference, Houston, Texas
11/15/1999 - Recent Developments in Trademark Law: What Every Business Should Know About Using Internet Trademark
10/09/1999 - Spoliation of Evidence: Technology and Business Litigation Present New Challenges