Norton Rose Fulbright US LLP
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Talbot has dual degrees in electrical engineering and biomedical engineering, enabling him to quickly become familiar with various technologies in both patent litigation and patent prosecution. Prior to practicing law, Talbot served as a Naval Officer forward deployed on US military vessels in the Western Pacific and Indian Oceans. Talbot's operational military experience makes him an extraordinary case and project manager.
Talbot's patent litigation experience includes various matters in the U.S. International Trade Commission, the Eastern District of Texas, the Western District of Texas, the Southern District of California, the Northern District of California, the Patent Trial and Appeal Board (PTAB), and foreign and domestic trade commission proceedings. Talbot is also experienced in patent licensing issues, including claims concerning competition law, standard essential patents, and fair reasonable and non-discriminatory (FRAND) licensing commitments.
Talbot's patent prosecution docket includes foreign and US applications for electrical, software, mechanical, and biomedical technologies. For example, Talbot is experienced in patent prosecution concerning inventions in cellular communications (and related 5G, 4G, and 3G standards), computer/graphics processor architectures, microelectronics, analog and digital signal processing (including computing, artificial intelligence (AI), communications, audio, and imaging contexts), various bio-mechanical and bio-electrical systems and devices (including micro-electromechanical systems (MEMS) and surgical devices), and semiconductor fabrication techniques and machinery.
Professional experienceExpand all Collapse all
JD, with honors, The University of Texas at Austin
BE, magna cum laude, Biomedical & Electrical Engineering, Vanderbilt University
- Texas State Bar
- US Patent and Trademark Attorney
- Leading smartphone chipset provider defending against claims of unfair competition and antitrust violations related to licensing of standard essential patents and sale of cellular modems. Representation spanned regulatory agency reviews in multiple countries, including litigation with the US Federal Trade Commission. Following a one month trial against the US FTC, in which the Northern District of California found antitrust violations and imposed an injunction to renegotiate several patent licenses, the 9th Circuit vacated and reversed the district court.
- Leading smartphone chipset provider defending against a customer claiming anticompetitive behavior and seeking declaratory judgement of invalidity and non-infringement of multiple patents in the Southern District of California. Litigation expanded into multiple parallel International Trade Commission cases and Federal District Court cases concerning patent infringement and trade secret misappropriation claims, as well as multiple Inter Partes Reviews before the US Patent and Trademark Office. All litigation was favorably settled minutes after opening arguments closed for the first case to trial.
- Major telecommunications provider defending infringement allegations for five patents that plaintiff alleged were essential for cellular network equipment to comply with the 3G UMTS standards. The asserted patents originated from a large Korean telecommunications company and were acquired by a Non-Patent Practicing Entity. Multiple defenses were asserted including non-infringement, invalidity, implied waver, failure to comply with Fair Reasonable and Non Discriminatory (FRAND) licensing obligations, and other equitable defenses. Litigation progressed past Markman and favorably settled shortly before the close of fact discovery.
- Major telecommunications provider defending infringement allegations for five patents that plaintiff alleged were essential to 4G LTE voice coding standards. Obtained a "customer-suit exception" ruling and stay on behalf of client, forcing plaintiff to proceed against client's supplier.
- Major mobile device chip provider in defending a seven-patent investigation brought at the International Trade Commission. The Complainant alleged that the seven patents covered various aspects of graphical processing units (GPUs) contained within accused smartphones. After accelerated discovery and a multi-day evidentiary hearing, the ALJ determined that no violation of section 337 had been established. Over Complainant's objections, the full International Trade Commission declined to review the ALJ's initial determination of no violation. Complainant appealed to the Federal Circuit, but subsequently dismissed the appeal as well as a parallel district court action.
- Patent prosecution of U.S. and foreign patent applications in various fields, including advising on efficient portfolio management.
- Pursuit and defense of patent infringement allegations in the International Trade Commission (ITC) and Federal District Courts.
- Patent and technology licensing negotiations.
- Management of complex discovery.
- Copyright and Trademark enforcement.
- Texas Rising Stars, Intellectual Property Litigation, Thomson Reuters, 2019 - 2021
- The Best Lawyers in America, Ones to Watch, Best Lawyers, 2021
- Best Lawyers - Intellectual Property Law, Best Lawyers, 2022 -2023
- Best Lawyers - Litigation – Intellectual Property, Best Lawyers, 2022 - 2023
- Best Lawyers - Patent Law, Best Lawyers, 2022
- SAME Student Leadership Medal, Society of American Military Engineers, 2006
- "New PTAB Rules Take Effect May 2, 2016," Patent Challenges, April 28, 2016
- "PTAB Declines to Sanction Petitioner Based on Alleged 'Profit Motive,'" Patent Challenges, October 29, 2015
- "A reminder from the PTAB that pro hac vice admission is not automatic," Patent Challenges, January 14, 2015
- Austin Intellectual Property Law Association
- Tau Beta Pi Engineering Honors Society
- Society of American Military Engineers (SAME)
- Association of Computing Machinery (ACM)
- Keeping up with Black Duck Open Source Software Solutions
- Children's Rights Clinic at University of Texas (Spring 2013)
- Pro bono representations for patent prosecution, family law, and immigration matters.
Standard essential patents, disclosures to standard bodies and related equitable defenses
Publication | February 18, 2021
US: Antitrust and patent law meet again
Publication | September 17, 2020