Richard S. Zembek
Head of Technology and Innovation, United States
Norton Rose Fulbright US LLP
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Richard Zembek's practice centers on intellectual property disputes. He defends clients across the country, and he helps companies protect, license, monetize, and enforce patents. His work focuses on telecommunication, computer, semiconductor, e-commerce, and Internet technologies, and he has tried both jury and arbitration cases. He has also handled significant matters involving industry standards and related IPR Policies, multiple defendants, and MDL proceedings.
Richard routinely counsels clients outside of the courtroom. His broad-based transactional experience includes representation of intellectual property holders, acquirers, and licensors in the preparation and negotiation of intellectual property acquisition agreements, patent licenses, technology transfers, non-disclosure agreements, and software development, license, and maintenance agreements. He leads due diligence for and counsels clients securing, managing, and maximizing profit from intellectual property rights. He also routinely assists clients in evaluating the intellectual property of others, conducting both freedom to operate evaluations and intellectual property due diligence.
JD, Vanderbilt University School of Law, 1996
BS, cum laude, Electrical Engineering, Union College, 1992
Richard is a member of Tau Beta Pi National Engineering Honor Society, Eta Kappa Nu Electrical and Computer Engineering Honor Society and Sigma Xi Scientific Research Society.
He was admitted to practice law in Texas in 1996 and as a patent attorney before the United States Patent and Trademark Office in 1998. He is also admitted to practice in the U.S. Court of Appeals for the Federal Circuit and the United States District Courts for the Southern, Northern, Eastern, and Western Districts of Texas.
- Texas State Bar
- US Patent & Trademark Attorney
Major mobile device chip provider in defending a seven-patent investigation brought at the International Trade Commission, where Complainant alleged that the 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.
Wireless technology company in an arbitration action filed by its licensee, which disputed whether certain events triggered its royalty payment obligations and claimed that differences between its and the third party's products precluded the triggering of its payment obligations. Following the prehearing submission of multiple technical expert witness statements, a two-week arbitration hearing and post-hearing briefing, the Tribunal found obligations were triggered and established royalty rates applicable to licensee's covered products.
Major mobile device chip provider in defending a four-patent investigation brought at the International Trade Commission, where Complainant alleged that three patents covered various aspects of graphical processing units (GPUs) and one patent covered DDR memory controllers. After the claim construction hearing, the case favorably settled.
Leading e-commerce companies accused of infringing a parametric search patent. Transferred the case from the Western District of Wisconsin to the Northern District of California, where the team won several significant discovery battles that shaped the requirements of the Local Patent Rules. Later obtained summary judgment that the asserted claims were obvious, which the Federal Circuit affirmed.
Point-of-sale software company in the Eastern District of Texas accused of infringing three patents related to wireless handheld devices and web page communications. After a five-day trial, the jury found our clients did not infringe and that the asserted claims were anticipated and obvious.
Leading Internet, e-commerce, information, and analytics companies in the Western District of Texas, where plaintiff alleged that their search engines and data retrieval systems violated its patent. Following extensive briefing and discovery, a full-day technical tutorial, and a full-day claim construction hearing, all asserted claims were found to be indefinite and, therefore, invalid as a matter of law.
Represented information and analytics companies in the Northern District of California accused of infringing patented method and system for storing and presenting medical data. The court granted Defendants' motion to dismiss, finding that the claims of the asserted patent were ineligible for patent protection and thus invalid.
Telecommunications company accused of infringing four patents concerning streaming Internet technology and satellite delivery technology; following the filing of a motion for summary judgment of invalidity, the matter was favorably settled.
- Chambers USA, Texas: Intellectual Property, Chambers and Partners, 2010 - 2020
- IP Star, Managing Intellectual Property, 2013 - 2020
- The Best Lawyers in America, Best Lawyers, 2015 - 2021
- IAM Patent 1000 - The World's Leading Patent Professionals, Intellectual Asset Management, 2014 - 2018; 2020
- Legal 500 US, recommended lawyer, intellectual property: patent litigation: full coverage, The Legal 500, 2014, 2016-2018
- Texas Super Lawyer, Intellectual Property Litigation, Thomson Reuters, 2013 - 2020
- Texas Rising Star, intellectual Property Litigation, Thomson Reuters, 2004 - 2009
- Co-author, "En Banc Federal Circuit Addresses 'Joint Infringement' Standard," Fulbright Briefing, September 5, 2012
- Co-author, "'Crowd Control?'—The Federal Circuit Defines the Pre-AIA Joinder Standard for Patent Cases But Leaves the Door Open on Other Options," Fulbright Alert, May 7, 2012
- Co-author, "Developing A Patent Monetization Program," Intellectual Property Today, October 2011
- Contributing author, "Intellectual Property Issues in Shale - Protecting Your Intellectual Property and Avoiding Infringement," Fulbright Briefing, July 13, 2011
- "Landmark Federal Circuit Decisions on Spoliation of Documents and Appropriate Sanctions," Fulbright Client Alert, May 16, 2011
- "Case Study: Centillion v. Qwest," Law360, February 7, 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 Briefing, January 2011
- Contributing author, Annual Review of Intellectual Property Law Developments 2006-2008, January 2009 (ABA)
- State Bar of Texas
- Houston Bar Association
- Houston Intellectual Property Lawyers Association
- American Intellectual Property Lawyers Association
- Institute of Electrical and Electronics Engineers
- Vanderbilt Law School Annual Fund, Firm Agent
- Union College, Class Agent
Publication | September 17, 2020
Publication | September 9, 2020
Publication | August 31, 2020