Clients count on Theo Foster to defend their companies against asserted patents. He represents both petitioners and patent owners in inter partes review challenges and other post-grant trials before the Patent Trial and Appeal Board at the U.S. Patent and Trademark Office. His clients’ technologies include:
- Wireless communications, including 3G, 4G, and 5G cellular; Bluetooth; and IEEE 802.11 WiFi
- Surgical implants
- Server virtualization and datacenter storage systems
- Telecommunications, including voice over IP, power over Ethernet, video on demand, videoconferencing, virtual private networks, optical transceivers, and captive portals
Known as a strong advocate for his clients, Theo regularly represents companies in appeals at the Federal Circuit, including numerous arguments before the Court. In addition, Theo works with clients to review and pursue patent purchase and licensing opportunities, obtaining for them the freedom to operate at the lowest possible cost.
Clients appreciate that Theo is easy to work with and that he collaborates well with client teams and litigation counsel from other firms. They particularly benefit from his passion for technology and his ability to quickly understand the details of their cases. With an undergraduate degree in chemical engineering, Theo brings clients a wealth of experience from his pre-law school work in IT consulting, where he developed a wide-ranging skillset in the electrical, computing, and software fields.
Selected Publications and Speeches
- “Good for the Gander: Patent Owners Face IPR Estoppel, Too,” co-author, The Patent Lawyer 8-10, Sep.-Oct. 2020.
- “It's OK to (Silently) Disagree With Proposed Claim Constructions in an IPR,” co-author, Westlaw Today, September 24, 2020.
- “Know Your Limits,” co-author, Intell. Prop. Mag. 54-56, June 2020.
- “Join the Party” (analysis of the Federal Circuit’s Facebook, Inc. v. Windy City Innovations decision), co-author, Intell. Prop. Mag. 56-57, May 2020.
- “PTAB Discretionary Institution and Parallel Petitions,” co-author, The Patent Law 30-32, Mar.-Apr. 2020.
- Wireless equipment manufacturer - prepare and file eight petitions for inter partes review that prompted a favorable settlement.
- Social media company - prevail in inter partes review on all claims against a patent asserted by a non-practicing entity.
- Medical device company - representing the patent owner, successfully obtained denial of institution on four petitions for inter partes review.
- Social media company - prevail in inter partes reexamination on all claims against two patents asserted by a non-practicing entity.
- Online meeting platform - prevail in inter partes review on all claims against three patents asserted by a non-practicing entity.
- Datacenter solutions provider - prevail in inter partes review on all claims against one patent asserted by a non-practicing entity.
- Communication equipment maker - prevail in inter partes review on all claims against six patents asserted by a non-practicing entity.
- Communication equipment maker – negotiate favorable terms for a license to another operating company’s patent portfolio.
- Defense group including several instant communication companies - draft and prosecute request for inter partes reexamination. The patent owner's efforts to distinguish the prior art in reexamination led to a grant of summary judgment of non-infringement in litigation.
- Consumer electronics company - draft and prosecute request for inter partes reexamination on two related patents. While the litigation was stayed, the Patent Office found all claims of both patents invalid.
- Global networking equipment provider - prosecute inter partes reexamination through an appeal to the Federal Circuit, resulting in a published opinion.
J.D., Southern Methodist University Dedman School of Law, 2007, magna cum laude; SMU Law Review Association
B.S., Chemical Engineering, University of Texas at Austin, 2000, with high honors
U.S. Patent and Trademark Office
Haynes and Boone, LLP and seven of its lawyers are recognized in Patexia’s 2021 ranking of the nation’s top firms and lawyers appearing before the U.S. Court of Appeals for the Federal Circuit (CAFC), which specializes in hearing patent appeals. Patexia’s CAFC Intelligence Report ranks Haynes Boone as the 7th most active firm representing patent appellees in 2021 and one of the Top 25 best perfo [...]