Norton Rose Fulbright US LLP
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Key industry sectors
Eagle's focus is intellectual property law – both litigation and transactional – though he also has experience with health-care related regulatory issues and has litigated trade-secret and business-tort claims.
Eagle represents clients in post-issuance patent validity proceedings before the Patent Trial and Appeal Board (PTAB), as well as in litigation in federal district courts. Eagle has succeeded on behalf of patent owners in inter partes reviews (IPRs) in which the PTAB upheld all challenged claims of the subject patents, and on behalf of petitioners in IPRs in which the PTAB invalidated all challenged claims of the subject patents. Eagle has also successfully argued before the US Court of Appeals for the Federal Circuit. In litigation, Eagle has represented clients in federal district courts in the Eastern, Southern, and Northern Districts of Texas, the Eastern District of Virginia, Delaware, and the Eastern District of Michigan.
Eagle's transactional work includes negotiating joint-development agreements and patent licenses, conducting intellectual property due diligence, and performing freedom-to-operate and patentability evaluations. Eagle also maintains an active patent-prosecution docket, and has prosecuted numerous utility and design patents to issue.
Eagle guides Fortune 500 companies, universities, hospital systems and startups in the development and implementation of strategies to effectively and efficiently secure and defend their intellectual property assets.
In the course of his litigation and transactional work, Eagle has worked with a broad range of mechanical and electrical technologies, including:
- medical devices related to endoscopy, intraosseous access, endovascular catheters, biosensors, and surgical robots;
- oil and gas completion and stimulation technologies, and well-control systems;
- manufacturing technologies such as rapid-prototyping and packaging systems
- consumer and construction products;
- optical filters and imaging systems; and
- card payment and information systems.
Eagle is admitted to practice before the US Patent and Trademark Office, all of the US District Courts in Texas, and the US Court of Appeals for the Federal Circuit.
Previously, Eagle worked for two years during law school as a Patent Agent and law clerk at an intellectual property law firm in Oklahoma City.
JD, honors, University of Oklahoma
BS, summa cum laude, Mechanical Engineering, University of Oklahoma
While in law school, Eagle was an articles editor on the American Indian Law Review and was a member of teams representing the University of Oklahoma in ABA National Appellate Advocacy Competitions. Eagle was also president of the student Intellectual Property Society and was selected for membership in both the Order of the Coif and the Order of the Barristers.
- Texas State Bar
- US Patent & Trademark Attorney
- Representation of oil and gas company accused of patent infringement, including filing successful IPRs that resulted in invalidation of all asserted patent claims and obtaining stay of litigation during pendency of the IPRs, and successfully arguing before the Federal Circuit to affirm the IPR decision
- Representation of Fortune 300 oilfield services company in connection with a multi-forum patent dispute with a competitor and its licensee related to fracking technologies. Successfully argued before the PTAB to uphold the validity of all claims of three client patents, and led the development of IPR petitions invalidating competitor's asserted patents.
- Briefed and argued successful Rule 12(b)(6) motion in the Eastern District of Virginia that resulted in invalidation of all claims of both asserted patents as claiming ineligible subject matter
- Coordinating development and enforcement of Intellectual Property portfolio for multi-industry manufacturing and service company, including trademarks and patents, as well as in litigation and negotiations to resolve patent and trademark infringement claims
- Negotiation of joint-development agreements on behalf of leading renewable-energy and consumer-products companies
- Negotiation of patent licenses with leading manufacturers of broadcasting and connectivity solutions
- Appeal to Patent Trial and Appeal Board resulting in reversal of all examiner rejections
- Negotiation of favorable dismissal of all claims against software company accused of patent infringement
- Patent clearance searching and counseling for large medical-device company relating to potential acquisition targets
- Counseling hospital system on development of procedures for identifying and pursuing patent protection for inventions
- Preparation and prosecution of numerous utility and design patent applications
- Counseling medical-device company on various insurance and regulatory issues related to entry into Texas market
- "On The Rise, 2018 Professional Excellence Awards," Texas Lawyer, ALM Media Properties, 2018
- Texas Rising Star, intellectual property, Thomson Reuters, 2017 - 2018
- Acritas Star, Acritas, 2017 - 2019
- Co-author with Tillman J. Breckenridge and Daniel Leventhal, "Patent State of Mind: Supreme Court Grants Cert in Global-Tech on Legal Standard for Inducing Infringement," Fulbright & Jaworski L.L.P. Client Briefing, October 2010
- Co-author with Jody Bishop, "Wyeth v. Kappos – Federal Circuit Extends Terms of Certain Patents," Fulbright & Jaworski L.L.P. Client Briefing, January 2010
- Co-author with Mark Garrett, "PTO Rescinds Controversial Rules and Pushes for Substantive Rulemaking Authority," Fulbright & Jaworski L.L.P. Client Briefing, October 2009
- Co-author with Mark Garrett and Richard Zembek, "Matter of First Impression' – District Court Orders Return of Sunset Royalties Paid for Patent Later Invalidated on Appeal," Fulbright & Jaworski L.L.P. Client Briefing, December 2008
- "Infringing Sovereignty: Should Federal Courts Protect Patents & Copyrights from Tribal Infringement?" 32 Am. Ind. L. Rev. 233, 2007 - 2008
- "Inter Partes Review (IPR): Overview & PTAB Updates," Oklahoma Bar Association 2019 Intellectual Property Law Seminar and Mid-Year Meeting (June 2019)
- Panel, "Administrative Effects on the Plaintiff-Defendant Balance," 18th Annual Texas Intellectual Property Law Journal (TIPLJ) Symposium (Austin, TX | February 22, 2019)
- Co-presenter with Charles Walker, "Witness Preparation: Ethical Yet Practical Considerations for District Court and PTAB Proceedings," HIPLA / UH 34th Annual Fall Institute on Intellectual Property Law (Galveston, TX | September 27 – 29, 2018)
- Moderator, "Innovation & Gender Bias: Exploring the cost of lost opportunities," AUTM 2018 Central Region Meeting (Minneapolis, MN | July 2018)
- "Inter Partes Review (IPR): Developments & Opportunities," Oklahoma Bar Association 2018 Intellectual Property Law Seminar and Mid-Year Meeting (June 2018)
- Co-presenter with Tamsen Barrett, "Basics of Intellectual Property Protection," mhca 2014 Fall Conference (Austin, TX | November 2014)
- Moderator, "Rules of Engagement Between Industry and Academia: How to Find and Fix the Big Issues to Close the Deal," AUTM 2014 Central Region Meeting (St. Louis, MO | July 2014)
- Co-presenter with Tamsen Barrett, "Basics of Intellectual Property Protection," Austin Technology Incubator (ATI) Lunch & Learn (Austin, TX | April 2014)
- Moderator, "Licensing Interactive: Negotiating the Basics," AUTM 2013 Central Region Meeting (Indianapolis, IN | July 2013)
- "Top Insurance Issues Civil Litigators Need to Know," 33rd Annual Advanced Civil Trial Course, State Bar of Texas (Houston, TX | October 2010)
- Co-presenter with Alicia Morris Groos, "International Trademark and Patent Strategy," Austin Bar Association Technology Section (Austin, TX | April 2010)
- Association of University Technology Managers - Central Region Planning Committee
- Program Co-Chair, 2018 Central Region Meeting
- Central Region Planning Committee, 2013-present
- Austin Intellectual Property Law Association, Member 2008-present, Amicus Committee 2010-2012
- Texas Bar Association