George Washington Jordan, III
Norton Rose Fulbright US LLP
George Washington Jordan, IIIvCard
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George has represented clients for more than 20 years in patent disputes and intellectual property transactions in a wide range of technology areas including wireless, e-commerce, software, semiconductors, automotive, energy, and aerospace. His patent dispute practice including over 80 patent cases has involved all forms and sizes of proceedings, all litigation phases, and all day-to-day aspects. George has led joint defense groups, multi-patent prior art investigations, deposition preparation, and document reviews—including training document review attorneys. His transactional practice has included evaluating patent assets for licensing or acquisition, conducting freedom to operate investigations, managing audits, and drafting licensing or asset purchase agreement provisions. For both practice areas, George draws on his experience drafting over 60 patents in the electrical arts.
Devoted to advancing the intellectual property law system, George is the Immediate Past Chair of the ABA Section of Intellectual Property Law. He also places a priority on community service by serving as a Deacon at Second Baptist Church.
JD, University of Texas School of Law, 1996
BS, Electrical Engineering, Duke University, 1993
Valedictorian, Frederick Douglass High School, 1989
George is admitted to practice before the Supreme Court of Texas, the U.S. Court of Appeals for the Federal Circuit, the U.S. Patent and Trademark Office, the U.S. District Courts of Texas, and certain other federal district courts.
- Texas State Bar
- US Patent & Trademark Attorney
George's legal experience has included:
- Defending communications chip manufacturer in International Trade Commission proceeding involving seven patents related to graphics processing unit (GPU) technology.
- Representing semiconductor inspection manufacturer in District of Minnesota case from complaint through expert discovery enforcing patent related to automated wafer inspection.
- Defending communications semiconductor manufacturer in Western District of Texas case related to processors for cellular phones.
- Representing semiconductor chip manufacturer in District of New Jersey case enforcing patents related to memory chips
- Defending cellular chip provider in Southern District of California case involving patent licensing dispute and alleged antitrust violations.
- Defending cellular chip provider in Northern District of California case involving alleged antitrust violations based on patent license business.
- Representing e-commerce companies as petitioners in covered business method proceedings challenging patentability of wireless data communication patents.
- Defending oil exploration company in District of Delaware case related to wireless mesh network patent.
- Defending communication solutions provider in Western District of Texas and Western District of Wisconsin cases involving thirty four patents and numerous cellular phones and set-top boxes.
- Representing communications semiconductor manufacturer as lead counsel in third party discovery matters related to cable modem and digital television chips as well as sixteen multi-district patent suits involving nine patents.
- Defending wireless network provider in Eastern District of Texas case related to pre-paid cellular telephone network systems.
- Defending telecommunications services provider in Eastern District of Texas case related to Internet browsing.
E-Commerce / Software:
- Representing real estate services company as petitioner in covered business method (CBM) proceeding challenging settlement verification software patent on patentable subject matter grounds.
- Defending restaurant software company in Eastern District of Texas case related to point-of-sale software patent resulting in a verdict invalidating the patent.
- Defending e-commerce companies in Northern District of Texas case related to sales transactions via mobile phone applications.
- Defending chemical companies in Southern District of Texas case related to electronic marketplace patent.
- Defending video hosting company in Eastern District of Virginia case related to online storage of media files.
- Defending e-commerce companies in District of Delaware case related to mobile phone applications and networks.
- Defending medical record solutions company in Southern District of Texas case related to medical procedure codes as local counsel.
- Defending oil services company in Northern District of Texas case from complaint through trial related to fluid measurement software for oil wells.
Automotive / Other:
- Defending U.S. electronic cigarette manufacturer in Central District of California case involving nine electronic cigarette patents.
- Representing foreign-based electronic cigarette manufacturer in inter partes review (IPR) petitions related to electronic cigarette patents.
- Defending automotive technology provider and foreign affiliates in Northern District of Illinois case involving six wheel aligner patents.
- Defending security technology provider in Eastern District of Tennessee case and Federal Circuit appeal related to security camera patent.
- Representing automotive technology provider in Central District of California and Eastern District of Michigan cases and Federal Circuit appeal related to diagnostic software update patent and involving attempted discovery from foreign parent company.
- Defending U.S. subsidiaries of foreign-based automotive equipment provider against subpoenas in Eastern District of Michigan case related to diagnostic software for vehicles.
- Defending foreign-based automotive technology provider in Eastern District of Virginia case related to remote tire pressure monitoring patent.
- Representing crib liner provider in District of Minnesota case from complaint through expert discovery enforcing mesh crib liner patent against competitor.
- Defending fluid technology manufacturer in Eastern District of Texas case from complaint through trial involving six patents and pump technology.
- Defending pipeline services company and principals in Southern District of Georgia case as lead counsel against patent infringement and breach of contract claims related to pipe bursting.
- Representing aerospace solutions provider in drafting intellectual property agreements related to divestitures.
- Representing health care provider in evaluating remote health monitoring patents related to a company acquisition.
- Representing renown Houston restaurant in restructuring trademark licensing agreements related to bankruptcy.
- Managing trademark portfolio of professional baseball player as lead counsel.
- Managing intellectual property portfolio of leadership consulting firm as lead counsel.
- Representing drilling technology provider in due diligence related to a company spinoff.
- Outstanding Legal Article, The Houston Lawyer, Houston Bar Association, 2004
- "Do not discriminate: A guiding principle of patent reform," ABA-IPL Landslide® magazine, July 2020
- "ABA-IPL at 125 years: Celebrating exhilarating accomplishments in IP," ABA-IPL Landslide® magazine, April 2020
- "Recalibrating Functional Claiming: A Way Forward," ABA-IPL Landslide® magazine, February 2020
- "A New Frontier in Patent Bar Ethics?," ABA-IPL Landslide® magazine, December 2019
- "Steps and Leaps," ABA-IPL Landslide® magazine, September 2019
- "Pre-suit and Pretrial Pitfalls of Frivolous, Similar and Result-based Claims," State Bar of Texas 15th Annual Advanced Patent Litigation, July 18, 2019
- "Intellectual Property Law Update," Texas Minority Counsel Program, October 18, 2018
- "Multi-Defendant Litigation Strategies and Tactics: What Works," State Bar of Texas 14th Annual Advanced Patent Litigation, July 12, 2018
- "An Interview with Avanci's Mark Taken," State Bar of Texas Intellectual Property Section TIPSHEET Newsletter, Vol. 11, No. 4, May 2017
- "Halo v. Pulse: A New Chapter for Willfulness and Enhanced Patent Damages," ABA-IPL Landslide® magazine, April 2017
- "Overbroad Functional Claiming: A Practical Guide on Validity Pitfalls," 32nd Annual HIPLA/UHLC-IPIL Fall Intellectual Property Law Institute, October 8, 2016
- "Enablement and Written Description Lessons on Functional Claiming," State Bar of Texas Intellectual Property Section TIPSHEET Newsletter, Vol. 11, No. 2, May 12, 2016
- "Refused Cross-Examination Results in PTAB Striking Non-Party Witness Declaration," Patent Challenges, December 9, 2015
- "PTAB cautiously authorizes motion to disqualify expert," Patent Challenges, September 14, 2015
- "PTAB emphasizes importance of claim language in determination of CBM-eligibility," Patent Challenges, March 16, 2015
- "PTAB denies request for rehearing based on failure to construe claim," Patent Challenges, March 11, 2015
- "Supreme Court addresses inducement in Akamai," Norton Rose Fulbright - Legal update, June 2014
- Co-author, "Litigation trends across the world show growth in major," Intellectual Property Magazine, October 23, 2012
- "Developing a Patent Monetization Program," Intellectual Property Today, October 2011
- "Managing the Presumption of Patent Validity: Microsoft v. i4i," ABA-IPL Landslide® magazine, September/October 2011
- "Centillion Data Sys. v. Qwest: Federal Circuit Addresses "Using" and "Making" a System that Includes Elements in the Possession of More than One Actor," Fulbright & Jaworski L.L.P. Briefing, January 25, 2011
- "The Economics of Reasonable Royalty Damages in Patent Litigation: Lucent v. Gateway," ABA-IPL Landslide® magazine, May/June 2010
- Editor-in-Chief, Annual Review of Intellectual Property Law Developments: 2006-2008, American Bar Association, January 2009
- "In the Matter of Negotiated Data Solutions – The FTC's Expanded Application of Section 5 Authority to Patent Hold-Ups," The Antitrust Source, April 2008
- "Using Prosecution Bars & Escrow Agreements in Patent Litigation," The Practical Litigator, November 2007
- "How to Avoid RAND Disputes," Managing IP, April 2006
- "An Evolving Balancing Act: Blanket Protective Orders in Patent Litigation," Patent Lawyer, Winter 2006
- "Intellectual Property: What Every Technology Business Should Know," TechLINKS, December 2005
- "Intellectual Property: What Every Entrepreneur Should Know," American Venture Magazine, November 2005
- "Using Scheduling Orders to Manage Claim Construction," IP Law Bulletin, September 2005
"Five Things Your Business Needs to Know about Digital Redistribution," TechLINKS, September 2005
"Race-Conscious University Admissions: Challenges in Obtaining Student Body Diversity in the Grutter/Gratz Era," The Houston Lawyer, December 2004
- Moderator, Keynote Luncheon Fireside Chat Featuring Hope C. Shimabuku, USPTO Texas Regional Office Director, IP WEST, San Antonio, Texas, October 2, 2019
- Speaker, "Pre-suit and Pretrial Pitfalls: Frivolous, Similar and Result-based Claims," State Bar of Texas 15th Annual Advanced Patent Litigation, San Antonio, Texas, July 18, 2019
- Speaker, "Keys to Successful Large-Scale Document Reviews," Minority Intellectual Property Lawyer Association, Houston, Texas, May 16, 2019
- Co-Presenter, "Intellectual Property Law Update," Texas Minority Counsel Program, Houston, Texas, October 18, 2018
- Co-Presenter, "Appellate Court Update," IP West, Newport Beach, California, October 4, 2018
- Speaker, "Multi-Defendant Litigation: What Works," State Bar of Texas 14th Annual Advanced Patent Litigation, Denver, Colorado, July 12, 2018
Co-Presenter, "Career Choice Series: Patent Law," ABA Webinar, May 18, 2018
Co-Presenter, "Navigating Venue and Jurisdiction in IP Litigation in Canada and the U.S.," ABA Midyear Meeting, Vancouver, British Columbia, February 1, 2018
- Speaker, "Functional Claiming," 32nd Annual HIPLA/UHLC-IPIL Fall Intellectual Property Law Institute, Galveston, Texas, October 8, 2016
- Moderator, "40 Tips in 40 Minutes - The ABA Lawyer Life Cycle: Navigating Engagement and Retention from Law Student to Senior Lawyer," ABA Section Officers Conference (SOC), Sept. 2016
- Speaker, "Checks on Broad Functional Claiming: Enablement and Written Description," State Bar of Texas Patent Committee, May 12, 2016
- Speaker, "Implications on the America Invents Act: Reliance on Trade Secrets vs. Patents," 30th Annual HIPLA/UH Fall Intellectual Property Law Institute, Galveston, Texas, October 11, 2014
- Moderator, "IP Audits: Exploring the Attics and Depths," ABA-IPL Landslide® Teleconference, September 2010
- Speaker, "What It Means to Be an Intellectual Property Attorney," Yellowstone Academy, Houston, Texas, February 2010
- Speaker, "Drafting Lessons for Patent Prosecutors," Patent Claim Construction Workshop, Law Seminars International, Atlanta, Georgia, April 2007
- Speaker, "Prosecution Disclaimers," 9th Annual Advanced Patent Institute, Austin, Texas, October 2004
- Speaker, "Opinions of Counsel – Defensive Strategy Before and During Patent Litigation," In-house CLE Series, Houston, Texas, June 2003
- Speaker, "Prelude to Patent Litigation: Affirmative Duties of Patent Owners and Potential Infringers," In-house CLE Series, Houston, Texas, October 2002
- Co-Presenter, "Attorney-Client Privilege Update," HIPLA Fall Intellectual Property Law Institute, Galveston, Texas, November 2001
- American Bar Association
- Immediate Past Chair, Section of the Intellectual Property Law ("IPL") (August 2019 - Present)
- IPL Section Chair (August 2019 - August 2020)
- IPL Section Chair-Elect (August 2018 - August 2019)
- IPL Vice Chair (August 2017-July 2018)
- IPL Secretary (August 2016 - July 2017)
- Section Officers Conference Fall Leadership Meeting Planning Committee (February 2016 - September 2016)
- IPL Membership Officer (August 2014 - July 2016)
- IPL Publications Officer (August 2012 - July 2014)
- Diversity Committee Chair, IPL Membership Board (August 2012 - July 2014)
- Standing Committee on Publishing Oversight (August 2011 - July 2014)
- IPL Council Member (August 2010 - July 2012)
- Chair, IPL Annual Review Editorial Board (August 2008 - July 2009)
- Chair, IPL Software Technology Committee (August 2006 - July 2008)
- Houston Intellectual Property Law Association (HIPLA), Fall Intellectual Property Law Institute Planning Committee (2014 - 2018)
- The Honorable Nancy F. Atlas Intellectual Property American Inn of Court, Barrister (2013 - 2016)
- American Intellectual Property Law Education Foundation (AIPLEF), Board of Directors (June 2009 - May 2012)
- State Bar of Texas
- Council Member, Intellectual Property Law Section (August 2020 - Present)
- Delegate, ABA House of Delegates (August 2020 - Present)
- Alternate Delegate, ABA House of Delegates (August 2018 - August 2020)
- Patent Committee Chair, Intellectual Property Law Section (October 2016 - July 2018)
- Boy Scouts of America, Troop 266 Assistant Scoutmaster (2014 - 2019)
- Second Baptist Church, Deacon (2009 - Present)
- Children At Risk, Board of Directors (2008 - 2011)
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