George Washington Jordan, III
Senior Counsel
Norton Rose Fulbright US LLP
Related services and key industries
Biography
George Jordan's practice focuses on intellectual property disputes and transactions. Whether in the courtroom or the conference room, he represents clients across the country in managing intellectual property strategy and risks.
With experience covering various electrical and mechanical technologies, George's work has included wireless, semiconductor, Internet, software, aerospace, vehicle, fluid, surgical equipment and camera technologies.
Having litigated patent, trade secret, trademark and copyright cases, George has significant experience with intellectual property matters, which have involved antitrust theories, multiple patents-in-suit, joint defense groups, large-scale document review, parallel litigation and foreign parent companies.
George's broad-based transactional experience includes preparing patents, intellectual property license agreements, software agreements, acquisition agreements and freedom-to-operate evaluations. He has also handled high-impact projects involving divestitures, bankruptcy and mergers.
Devoted to advancing intellectual property laws, George served as the first African-American Chair of the ABA Section of Intellectual Property Law, a 15,000-member body of intellectual property professionals.
Professional experience
Collapse allJD, 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 and Trademark Attorney
Disputes:
- Defended against multi-patent claims, including a case involving 34 patents targeting numerous cellular phones and set-top boxes, a case involving six patents on pump technology, a case involving nine electronic cigarette patents and a case involving six wheel aligner patents.
- Obtained invalidity of patents related to fluid measurement software, electronic cigarette and menu generation software.
- Defended against third party discovery across 16 multi-district suits involving nine patents as lead counsel.
- Obtained successful Markman rulings, including for enforcement of patents related to semiconductors inspections and crib liners.
- Led joint defense groups against patent claims involving online ticketing, mobile phone applications and payment systems.
- Served as local counsel in defending against copyright and trademark claims.
- Litigated trade secret and unfair competition claims against former employees.
- Trained and led document review teams in large-scale patent cases, including for a major mobile device chip provider.
- Enforced patent for remote fluid applicator monitoring and defended against pipe bursting patent as lead counsel.
Transactional:
- Drafted over 50 patents in the electrical and mechanical arts, including memory controllers, device configuration software, piezoelectric speakers, water cut meters, hardware verification, digital television, mud pulse telemetry, disk drive interfaces, power supplies, wireline drilling measurements, user authentication, microcontroller architecture, computer power savings, speakerphone gain control, peripheral device monitoring, barcode scanning, computer diagnostics, automated self-service mail processing, asynchronous serial communication, portable computer microphones, CD-ROM drive control, timer architecture, computer status feedback, and video decoding.
- Conducted due diligence for company acquisitions and spinoffs involving remote health monitoring, drilling technology, and flight control equipment.
- Advised on trademark strategy, including bankruptcy-restructuring of license agreements for a restaurant and managing a trademark portfolio of a professional baseball player.
- Managed intellectual property assets of start-up and small companies involving water-in-oil monitoring, drug interaction software, wine consulting, and leadership coaching.
- Outstanding Legal Article, The Houston Lawyer, Houston Bar Association, 2004
- "Privilege Pitfalls in Patent Practice: From Start to Finish," State Bar of Texas Advanced IP Law, February 18, 2022
- "The Supreme Court High Profile Actions in the 2020-21 Term: Less is More," The IP Book (Minn. CLE 2021), Co-author, Chapter 1
- "US Supreme Court addresses constitutionality of PTAB judge appointment," Norton Rose Fulbright - Legal update, June 2021
- "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
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"Five Things Your Business Needs to Know about Digital Redistribution," TechLINKS, September 2005
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"Race-Conscious University Admissions: Challenges in Obtaining Student Body Diversity in the Grutter/Gratz Era," The Houston Lawyer, December 2004
- Judge, National Patent Application Drafting Competition - Texas Regional, March 5, 2022
- Speaker, "Privilege and Patents," State Bar of Texas Advanced IP Law, February 18, 2022
- Speaker, "Journey into Intellectual Property & Privilege," Thurgood Marshall School of Law's Intellectual Property Law Society, Houston, Texas, October 19, 2021
- Speaker, "Navigating Privilege Pitfalls in a Patent World," 46th Annual Intellectual Property Law Institute, October 7, 2021
- Speaker, "How to Make a Lasting Impact At Your Workplace: Managing Expectations," ABA-IPL Webinar, March 18, 2021
- Speaker, "ABA-IPL: IP Is All Around Us," Austin High School, Austin, Texas, February 12, 2020
- Speaker, "Navigating the Bench and Bar," State Bar of Texas Advanced IP Course, Houston, Texas, February 6, 2020
- Speaker, "IP Law Seminar: Large-Scale IP Document Reviews," Texas Association of Legal Professionals, Houston, Texas, January 25, 2020
- 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
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Co-Presenter, "Career Choice Series: Patent Law," ABA Webinar, May 18, 2018
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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
- Texas Southern University's Thurgood Marshall School of Law, Adjunct Professor (August 2021 – Present)
- American Bar Association
- Chair, Section of the Intellectual Property Law ("ABA - IPL") (August 2019 – August 2020)
- ABA - IPL Council Member (August 2010 – July 2021)
- ABA - IPL Investment Committee Member (August 2019 – Present)
- Chair, ABA - IPL Software Technology Committee (August 2006 – July 2008)
- State Bar of Texas
- Council Member, Intellectual Property Law ("IPL") Section (August 2020 – Present)
- Delegate, ABA House of Delegates (August 2020 – Present)
- IPL Patent Committee Chair (October 2016 – July 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)
- Boy Scouts of America, Troop 266 Assistant Scoutmaster (2014 – 2019)
- Second Baptist Church, Deacon (2009 – Present)
- Children At Risk, Board of Directors (2008 – 2011)
Knowledge
The constitutionality of PTAB judge appointment
Publication | June 23, 2021
US: Do not discriminate: A guiding principle of patent reform
Publication | July 10, 2020
ABA-IPL at 125 years: Celebrating exhilarating accomplishments in IP
Publication | April 13, 2020
Recalibrating functional claiming: A way forward
Publication | February 21, 2020