Russ Emerson litigates patent cases in trial courts across the country and at the Federal Circuit. His cases have involved a wide variety of technologies, including telecommunication systems, lasers, computer networks, consumer products and product packaging, semiconductor fabrication, industrial systems and processes, and construction materials and processes. He has won non-infringement and invalidity judgments for his clients in a number of venues, including the Eastern District of Texas. Cases of note include:
- L-3 Communications v. Sony Corp. (D. Del., Andrews, J.): Won complete jury verdict as lead trial counsel for L-3 Communications in validity-only trial.
- Transcore, LP v. Electronic Transactions Consultants Corp. (N.D. Tex., Kinkeade, J.): Won summary judgment of patent exhaustion for ETCC in case involving automatic RFID toll-collection (e.g., "EZPass") technology. (2008 WL 2152027 (N.D. Tex. May 22, 2008).) Successfully defended judgment on appeal to Federal Circuit. (563 F.3d 1271 (Fed. Cir. 2009).)
- Raylon LLC v. Complus Data Innovations Inc. (E.D. Tex., Davis, J.): Won summary judgment of non-infringement for Complus in case involving electronic hand-held ticket writers. Successfully appealed district court’s refusal to sanction plaintiff and plaintiff’s counsel under 35 U.S.C. § 285 and Fed. R. Civ. P. 11 (700 F.3d 1361 (Fed. Cir. 2012)).
- DataTreasury v. Viewpointe Archive Services (E.D. Tex., Folsom, C.J.): Won judgment as a matter of law of non-infringement for Viewpointe in case involving electronic transmission and storage of financial instruments.
- MyMail Ltd. v. American Online Inc. (E.D. Tex., Davis, J.): Won summary judgment of non-infringement for Prodigy and SBC Internet Services in case involving dial-up internet-access technology.
- Aspen Industries v. Benchmark Industries (E.D. Tex., Ward, J.): Won summary judgment of invalidity for Benchmark in case relating to air-conditioning technology. Successfully defended judgment on appeal to Federal Circuit.
- Chase Medical Inc. v. CHF Technologies Inc. (N.D. Tex., Lynn, J.): Won jury verdict for Chase Medical of willful infringement, enhanced damages, lost profits, attorney fees, and injunction in trial for infringement of a patent for a heart-surgery medical device.
- British Telecommunications, PLC v. SBC Communications Inc. (D. Del., Robinson, J.): 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.
Russ also handles cases involving trademarks and trade dress, copyrights, theft of trade secrets, and complex commercial and technical matters. In addition to his trial-court practice, Russ has successfully argued a number of appeals before the Federal Circuit.
He also manages patent and trademark prosecution matters and advises clients on acquiring intellectual-property assets and avoiding infringement.
Before attending law school, Russ was a commissioned officer in the United States Navy, where he 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. In addition to his law degree, Russ holds a B.S. in mechanical engineering.
Recent Speeches and Publications
- "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 11, 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.
- "Mission Impossible? Protecting Trade Secrets on the Internet," State Bar of Texas CLE webcast, August 2009.
- "Patents and Electronic Tolling," International Bridge, Tunnel and Turnpike Association, June 2009.
- "A License by Any Other Name...May Still Exhaust Your Patent," State Bar of Texas Annual Meeting, June 2009.
- "Preparing for (and Avoiding) the Courtroom" (co-authored with Jeff Wolfson), Nature Biotechnology, Vol. 26, No. 7, July 2008.
- "Pre-Filing Considerations in Patent Cases," University of Texas 11th Annual Advanced Patent Law Institute, October 2006; Dallas Bar Association, Intellectual Property Section, October 2007; American Intellectual Property Association Spring Meeting, May 2008; IP Litigator, Vol. 15, No. 1, January/February 2009.
- "Damages, Injunctions, and Settlements: How eBay May Affect Settlement Negotiations in Patent-Infringement Cases," Willamette Management Associates Insights, Autumn 2006 issue.
- "Recent Developments in Patent Damages," Licensing Executives Society, November 2005.
- "The Computer Fraud and Abuse Act," Greater Dallas Chamber of Commerce - Technology Business Council Forum, Addressing Cyber Threats of the 21st Century, February 2005.
- "Willful Infringement and Advice of Counsel," Dallas-Fort Worth Intellectual Property Law Association, July 2004.
- Recognized in Best Lawyers for Intellectual Property Law, 2011-2014, and Litigation - Patent, 2012-2014
- Martindale Hubbell client review rated 5.0 out of 5 Preeminent, 2010
- Recognized by Chambers USA as a leading lawyer in Intellectual Property in Texas, 2010-2014
- Named a Texas Super Lawyer in Intellectual Property Litigation and Business Litigation, Law and Politics Magazine and Texas Monthly, 2012-2013
- Named a Texas Super Lawyer Rising Star in Intellectual Property Litigation, Law and Politics Magazine and Texas Monthly, 2005 and 2007
Selected Representative Experience
Social Sampling, Inc. and Mass Connections, Inc. v. CROSSMARK, Inc., and Shopper Events, LLC, NO. 8:12-cv-01576-CJC (C.D. Cal.)
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 terms favorable to clients.
Raylon v. Complus Data Innovations Inc., et al.
We represented Complus Data Innovations Inc. in this patent-infringement case filed in the Eastern District of Texas (Davis, C.J.). After winning summary judgment of noninfringement, we appealed the trial court's denial of Rule 11 and Section 285 sanctions to the Federal Circuit, which reversed and remanded to determine attorneys' fees under Rule 11 and to reconsider sanctions under Section 285.
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.
SBC Patent Infringement Dismissal
Haynes and Boone served as lead counsel for patent-infringement defendants Southwestern Bell Communications Services, Inc. and Ameritech Services, Inc. We successfully moved court to dismiss section 271(g) infringement claims against all SBC defendants, which resulted in a stipulated dismissal of Southwestern Bell Communications Services from the case. Patent involved method and apparatus for installing fiber-optic cable. Case settled. British Telecommunications, PLC v. SBC Communications, Inc.,
1:03-cv-526 (D. Del.)
SBC Patent Infringement Defense
Our firm represented Southwestern Bell Communications defendants (SBC Communications, Inc., Prodigy Communications Corp., and SBC Internet Services, Inc.) in patent-infringement case involving dial-up internet access. Haynes and Boone won summary judgment of non-infringement, which was upheld on appeal. (Haynes and Boone did not handle the appeal). MyMail, Ltd. v. America Online, Inc.,
6:00-cv-189 (E.D. Tex.)
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.
04/29/2014 - Supreme Court Sets New Standards for Attorneys' Fees in Patent Infringement Lawsuits
In a pair of unanimous decisions issued today, the United States Supreme Court has substantially lowered the bar for the prevailing party’s recovery of attorneys’ fees under § 285 of the Patent Act.
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.”
09/24/2008 - The Federal Circuit Changes The Test For Design Patent Infringement
This news alert discusses changes in design patent law in light of the Egyptian Goddess, Inc. v. Swisa, Inc. case.
09/08/2008 - The IP Beacon
A Haynes and Boone Newsletter highlighting current issues in Intellectual Property Law.
07/01/2008 - Preparing for (and avoiding) the Courtroom
Intellectual property (IP) is often the most valued asset of biotech firms, especially startups. Two IP lawyers offer guidance on avoiding suits altogether, when to settle them and when to fight.