Russ Emerson

Practices

Education and Clerkships

J.D., University of Texas at Austin School of Law, 1997, with honors; Moot Court, Mock Trial; Texas Intellectual Property Law Journal

B.S., Mechanical Engineering, University of Florida, 1988, with high honors

  • Judicial Intern, Texas Supreme Court Justice Nathan Hecht (1996)

Admissions

Texas

U.S. Patent and Trademark Office

Court Admissions

United States Supreme Court

U.S. Court of Appeals for the Federal Circuit

U.S. District Court for the Northern District of Texas

U.S. District Court for the Southern District of Texas

U.S. District Court for the Eastern District of Texas

U.S. District Court for the Western District of Texas

Texas Supreme Court

Profile

Russ Emerson is an experienced litigator and first-chair trial lawyer who has served as lead counsel in scores of patent infringement and other intellectual property cases in Texas and across the country. His cases have involved a wide variety of technologies, from semiconductors to lasers, medical devices to pharmaceutical products, and drilling technology to information theory.

A former naval officer, Russ leads litigation and trial teams sized to effectively and efficiently accomplish his clients’ goals. As a registered patent lawyer with a degree in mechanical engineering and experience in nuclear engineering, Russ combines fluency with technology with the ability to explain that technology to judges and juries alike.

Russ prides himself in creatively and aggressively defending his clients’ interests. For example:

When client Electronic Transactions Consultants (“ETC”) won a major contract from its much larger competitor TransCore, TransCore sued ETC for patent infringement. Because TransCore had settled an earlier suit against ETC’s equipment supplier by granting the supplier a covenant not to sue, Russ focused ETC’s defense on patent exhaustion arising from the covenant. The district court granted ETC a summary judgment, which Russ defended at the Federal Circuit. The appeals court affirmed, holding for the first time that "an unconditional covenant not to sue authorizes sales by the covenantee for purposes of patent exhaustion." TransCore, LP v. Elec. Transaction Consultants Corp., 563 F.3d 1271, 1274 (Fed.Cir.2009). The TransCore decision has been cited over 100 times by other courts.

More recently, Russ defended Complus Data Innovations against patent infringement claims brought in the Eastern District of Texas. Seeing that the claims were without merit, Russ immediately moved for summary judgment of non-infringement. When the court failed to rule on the motion and the plaintiff refused to dismiss its suit, Complus and its co-defendants moved for sanctions under Rule 11. The district court eventually granted summary judgment but declined to sanction the plaintiff, so the defendants appealed. Arguing for Complus, Russ helped convince the Federal Circuit to reverse the district court’s denial of sanctions—the first time the Federal Circuit ever reversed a district court’s denial of Rule 11 sanctions. Read the Complus decision and articles about the case from Law.com and Texas Lawyer.

In 2013, the IP Navigation-affiliated non-practicing entity Parallel Iron sued San Antonio-based Rackspace for patent infringement in Delaware. But Parallel Iron sued on patents that IP Nav had earlier asserted against Rackspace under the terms of a “Forbearance Agreement.” Because Parallel Iron violated that agreement when it sued Rackspace, Russ sued IP Nav and Parallel Iron in San Antonio for a declaratory judgment of non-infringement and breach of contract. Rackspace soon settled on favorable terms. Read about the case and related coverage.

Russ also handles cases involving trademarks and trade dress, copyrights, theft of trade secrets, and other complex technical matters. In addition to his trial court practice, Russ has successfully argued a number of appeals before the Federal Circuit. Russ is also active at the Patent Trial and Appeal Board, having participated in more than 50 inter partes review proceedings. Before attending law school, Russ served as a division officer on board a nuclear-powered, fast-attack submarine and was certified as a Naval Nuclear Engineer by the Department of Energy's Naval Reactors Division.

Professional and Community Activities

  • State Bar of Texas (Intellectual Property Section)
  • Dallas Bar Association (Intellectual Property Section)
  • American Intellectual Property Law Association

Chambers

Chambers 2017

Haynes and Boone Maintains Solid Presence in 2017 Chambers USA Rankings

Haynes and Boone, LLP has been featured in the annual Chambers USA: America’s Leading Lawyers for Business 2017 directory. The widely-respected legal publication recognized 50 individual lawyers across 20 practice areas.


Published by Chambers and Partners, May 2017

Patents

IP

Haynes and Boone IPR Team Invalidates Realtime Patents

Haynes and Boone Partners Kyle Howard, Greg Webb, David O’Dell and Russ Emerson represented Riverbed Technology, Inc. before the Patent Trial and Appeal Board in a multimillion-dollar dispute over data compression patents.

Honors

Super Lawyers

Haynes and Boone Makes Strong Showing in 2017 Texas Super Lawyers

Texas Super Lawyers recognized 57 Haynes and Boone lawyers in the 2017 edition of its annual award listing. The awards are based on peer recognition and professional achievements. Of those nominated, only five percent of the total lawyers in the state are selected for inclusion.

Professional Recognition

  • Recognized as a "2016 Lawyer of the Year" by Best Lawyers, Woodward/White, Inc., in Litigation - Intellectual Property, 2016
  • Recognized in The Best Lawyers in America, Woodward/White, Inc., for Litigation - Intellectual Property Law, 2011-2018, and Litigation - Patent, 2012-2018
  • Martindale Hubbell client review rated 5.0 out of 5 Preeminent, 2010
  • Recognized by Chambers USA, Chambers & Partners, as a leading lawyer in Intellectual Property in Texas, 2010-2017
  • Named a Texas Super Lawyer, Thomson Reuters, in Intellectual Property Litigation and Business Litigation, 2012-2017
  • Named a Texas Super Lawyer Rising Star, Thomson Reuters, in Intellectual Property Litigation, 2005 and 2007

Selected Client Representations

  • Currently defending maker of WAN-optimization products against patent-infringement claims relating to data-compression technology (E.D. Tex., PTAB).
  • Defended start-up against claims of patent infringement, trade-secret misappropriation, and trademark infringement in case relating to laser technology (N.D. Texas).
  • Defended oil-and-gas operating company in patent-infringement case relating to multi-pad horizontal drilling. Case settled for no payment (E.D. Tex.).
  • Won complete jury verdict as lead trial counsel for patent owner in validity-only trial involving CMOS image sensors (D. Del.).
  • Successfully represented defendants - national marketing services and event demonstrations providers - in a patent-infringement lawsuit involving method patents directed at clients’ key services. Litigation settled on favorable terms (C.D. Cal.).
  • 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 (N.D. Tex.).
  • 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 (E.D. Tex.).
  • Won summary judgment of non-infringement for Prodigy and SBC Internet Services in case involving dial-up internet-access technology (E.D. Tex.).
  • Won summary judgment of invalidity in case relating to air-conditioning technology (E.D. Texas). Successfully defended judgment on appeal to Federal Circuit.
  • Won judgment on the pleadings of non-infringement for Southwestern Bell Communications Services, Inc. in case relating to devices for installing fiber-optic cable. Case settled favorably for remaining SBC defendants (D. Del.).

Selected Publications and Speeches

  • "Alice in Wonderland: Amending Section 101 To Get Out of the Rabbit Hole," Dallas Bar Association IP Section, February 2016.
  • "Back To the Future: A Return To Pre-1952 Law of ‘Inventiveness,’" Center for American and International Law IP Conference, November 2015.
  • "One Year in Wonderland: Dispositive Motions Post-Alice, 11th Annual State Bar of Texas Advanced Patent Litigation Course, July 2015.
  • "Before and After Octane Fitness: A Case Study, 10th Annual State Bar of Texas Advanced Patent Litigation Course, July 2014.
  • "Joint/Divided Infringement: Past, Present, & Future," 17th Annual University of Texas Advanced Patent Law Institute, November 2012.
  • "A Strategic Approach to Post-Judgment Remedies: Identifying Factors Influencing Ongoing Royalties," HarrisMartin's Intellectual Property Law Conference, June 2012.
  • "Not Done Yet: Post-Trial Remedies After E-Bay," 2012 AIPLA Spring Meeting.
  • "IP Litigation in the United States," Panelist, TechLaw Fall Conference, Pittsburgh, PA, November 2011.
  • "Entire Market Value Rule: Recent Cases on Reasonable-Royalty Damages," The Licensing Journal, Vol. 30, No. 1, January 2010 and IP Litigator, Vol. 16, No. 1 January/February 2010.

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