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Robert Shaddox

Shareholder; Chair, Intellectual Property Practice Group

Robert Shaddox has litigation experience in a wide range of substantive areas and forums, with a focus on Intellectual Property (patent, trademark, copyright, trade secret and unfair competition).  His experience further includes infringement and validity analyses and prosecution of patents in nanotechnology, the mechanical, electro-mechanical, electronic, chemical composition, medical device and software arts, and trademark, copyright, and foreign patent applications and prosecution, as well as technology transfer and transactional licensing of patents, copyrights and trademarks. Robert has also served as an expert witness on patent prosecution and validity, and on reasonableness and necessity of attorney fees for Intellectual Property matters.

Co-author of the WinTech blog, which provides legal insight for start-up and established technology businesses.

Representative Experience

  • Nanotechnology: Ordered assemblies of nanotubes and continuous fibers, catalytic growth of nanotubes, electromagnetic field mixing of metals with nanotubes, dispersion of nanotubes in other materials, nanotube composite materials and thermal barriers, structural and multifunctional nanocomposite ceramics, recycling nanotubes from polymer nanocomposites, gas-phase process for single-wall carbon nanotubes, containerless infiltration with electromagnetic levitation
  • Automotive/Transportation: Auxiliary lift axles, lockout shock absorbers, auxiliary bridge axles, axle suspension locks
  • Oilfield: Drilling, exploration and production tools and methods, drilling bits, rotating friction grips, torque transfer tongs; turbodrills, positive displacement rotary motors, gerotors; directional drilling/survey tools; drilling fluids; lubricity testing apparatus, gas lift mandrels and valves; well control valves and safety valves; displacement plug injection apparatus; coil tubing injection apparatus, connections, and tools; offshore platform devices, drilling platform rescue apparatus; fire control and monitoring systems; guttered vacuum insulated tubing; pressure vessel and pipeline leak sealing methods and devices; diaphragm pressure seals; undersea relocation apparatus; transportable petroleum refinery; pumps
  • Other: Medical devices; surgical and neurosurgical devices, dental devices; composite structural systems, composite couplings and fittings; abrasion resistant coatings; foundation systems; trenching safety devices; roofing systems; road systems; interlocking weight distribution matting; polymer mixing devices; bicycle frames and designs; firearms and ordnance; educational toys and games; and fluid flow control and filtering devices
  • Engineering: Experience related to international and domestic engineering and heavy construction projects for highway bridges, roads, buildings and wastewater treatment facilities; manufacturing experience in concrete precasting and oilfield drill bit manufacturing

Experience

  • Ernie Wu v. James Shyun, Civil Action No. 4:08-cv-01006, 2008, Trademark declaratory judgment case, invalidated incontestable Federal trademark on behalf of DJ plaintiff in the United States District Court, Southern District, Houston.
  • Reedhycalog UK, Ltd. v. Ulterra Drilling Technologies, LP, 2007 patent infringement action pending in the United States District Court, Texas Eastern Division, Tyler, technology involving PDC drill bits, pending action, companion case to Reedhycalog v. Halliburton and Baker Hughes.
  • Garner Environmental Services, Inc. v. Richard Goff, 1st Global Industrial Services, LLP, 2006 action for plaintiff in the United States District Court, Houston, handled matter involving wastewater treatment equipment and methods, patent, trademark and contract issues, obtaining a TRO, preliminary injunction, and favorable settlement after expedited discovery. 
  • Quadrant Management, Inc. v. Matrix engineering, Ltd., 2006 patent infringement action in the United States Texas Eastern District Court, Tyler, favorable settlement prior to discovery after briefing for defendant on a nuance of patent law giving the defendant an implied license under self-help and the Texas U.C.C.
  • LBT Enterprises, Ltd. v. Defendant Coastal Pile Cutters, LLC, 2004 patent infringement action pending in the United States District Court, Houston, technology involving heavy construction equipment and methods for offshore pile cutting and rig demobilization.
  • John Blackmer v. The Woodlands Operating Company, Civil Action No.: H-03-3559, 2003, action in the Southern District of Texas, Houston, represented Defendant in copyright suit, where case settled prior to trial, subsequent to third party actions and mediation.
  • 99¢ Only Stores v. Discount Wholesale, Ltd.; Discount Wholesale Management, LLC; Gerile Properties, Ltd.; Gerile Properties Management, LLC; Clive B. Fleishman; Clive N. Fleishman & Does 1-10, United States District Court, Houston, in 2003 trademark suit, defense for client settled subsequent to mediation by court.
  • Keane v. Fox Television et al, United States District Court, Houston, in 2003 copyright and trademark suit, defense for client Freemenatle Communications (American Idol producers), case won on motion to dismiss and attorney's fees awarded for defense.
  • Downhole Injection Systems v. Dyna Coil of South, et al; United States District Court, Houston, Texas, technology involving coil tubing injection apparatus, 2001 patent defensive action resolved after discovery and settlement.
  • Cudd Pressure Control, Inc. v. Westbury Service Company, L.L.C., d/b/a Downhole Injection Systems; United States District Court, Houston, Texas, technology involving coil tubing injection apparatus, 2000 patent declaratory judgment defensive action resolved after Markman hearing and after patent in suit held unenforceable for inequitable conduct.
  • Watson and Chalin v. The Boler Company, United States District Court, Sherman/Tyler, Texas, technology involving self steering auxiliary lift axles, 2001 patent infringement action settled after summary judgment/Markman hearing.
  • Watson and Chalin v. The Boler Company, United States District Court, Sherman/Tyler, Texas, technology involving self steering auxiliary lift axles, 2001 patent infringement action settled after summary judgment/Markman hearing.
  • Watson and Chalin v. The Boler Company, United States District Court, Sherman/Tyler, Texas, technology involving self steering auxiliary lift axles, 2001 patent infringement action settled after summary judgment/Markman hearing.
  • Watson and Chalin v. The Boler Company, United States District Court, Sherman/Tyler, Texas, Boler III technology involving self steering auxiliary lift axles, 2001 patent infringement action against Boler, Markman ruling in client's favor triggered by summary judgment motion for literal infringement
  • The Boler Company v. Watson and Chalin, United States District Court, Cleveland, Ohio, Boler II technology involving self steering auxiliary lift axles, 2000 patent infringement action against our client Watson and Chalin, settled prior to the hearing after mediation by the court.
  • Dr. Jon Key v. Oral-B and the Gillette Company, Civil Action No. 2 – 00CV228, 2000, action in the Eastern District of Texas, Marshall Division, represented Plaintiff in patent infringement case involving patented toothbrush design. Case settled after extensive discovery in second mediation.
  • Ultimate Communications, Inc. v. JD Services, Inc., No. 2000-47217, Represented client in 2000 trademark infringement case in the 133rd District Court of Harris County, Houston. Case settled.
  • Ultimate Communications, Inc. v. Network Communications International, Corp., No. 2000-46897, Represented client in 2000 trademark infringement case in the 164th District Court of Harris County, Houston. Case settled after expedited discovery.
  • Ultimate Communications, Inc. v. Touch Tel USA LLC, No. 2000-46896, Represented client in 2000 trademark infringement case in the 129th District Court of Harris County, Houston. Case settled.
  • Babcock and Wilcox v. Tidelands and Oil Tech Services, patent infringement action in United States District Court, Los Angeles, California, technology involving vacuum insulated gettered tubing for steam injection to enhance oil recovery against our client Oil Tech Services, matter still pending, was stayed pending reexamination of patent obtained by Defendant, Plaintiff currently in bankruptcy proceedings.
  • The Boler Company v. Watson and Chalin, United States District Court, Columbus Ohio, Boler I technology involving self steering auxiliary lift axles, 1999 patent infringement action against our client Watson and Chalin. Plaintiff sought a preliminary injunction, but settled prior to the hearing after expedited discovery, briefing, and pretrial conference demonstrating likely invalidity of asserted claims.
  • Ultimate Communications, Inc. v. Twister Communications, 1999, District Court, Harris County, sought temporary restraining order and preliminary injunction for trademark infringement for a prepaid telecommunications services company in District Court, Harris County, Houston, after expedited discovery case settled prior to injunction hearing.
  • Safety Vision v. Prima Facie, C.A. No. H-99-3924, Represented client in 1999 trademark infringement case, U.S. District Court (Southern District of Texas).
  • Zellweger Analytics v. Isco, 1998, obtained preliminary injunction before Judge Sam Kent, United States District Court, Galveston, in patent suit against Isco technology involving water quality analyzers. Case settled subsequently.
  • Zellweger Analytics v. Milgram and Loberant, 1997, United States District Court, Chicago Illinois, misappropriation and trade secrets case regarding computer source code.
  • High Standard Manufacturing Company, Inc. v. Stoeger International and Armas International, 1997, obtained summary judgments on two out of three dispositive issues before Judge Lynn Hughes, United States District Court, Houston, in trade dress litigation suit involving high end .22 caliber target pistols. Both defendants ceased infringing and case subsequently disposed of.
  • Safeco, Inc. v. Ingram Cactus, Inc., 1998, obtained summary judgments on two out of three dispositive issues before Judge Ewing Werlein, United States District Court, Houston, in trade secret suit involving safety valve actuators. Case settled prior to trial.
  • Thomas Nash v. Houston Rockets Basketball Team, 1996-99, before Judge Ken Hoyt, and before Judge Vanessa Gilmore, United States District Court, Houston, in copyright infringement and breach of contract suit involving design of new team logo by contest winner. Case settled prior to trial.
  • P.S.I. v. First Reserve, et al., 1997 two week jury trial Harris County District court, Houston, Texas, breach of requirements contract and fraud, Technology gas lift valves for enhanced oil production, $1.4 million verdict for plaintiff on contract.
  • Williamson v. Smith International Inc. et al., 1992 patent infringement action asserting plaintiff's patents on PDC rock bits.
  • Uni-Mat v. Hicks, 1992 patent infringement action-stayed, evolved into action out of bankruptcy, contesting plaintiff's patents on oilfield site preparation and support structures.
  • Williamson v. Diamant Boart Stratabit Inc. et al., 1990 patent infringement action asserting plaintiff's patents on PDC rock bits.
  • Uni-Mat International Inc. v. Hunt et al, 1990 patent infringement action asserting plaintiff's patents on oilfield site preparation and support structures.
  • Uni-Mat International Inc. v. Central Industries et al, 1990 patent infringement action asserting plaintiff's patents on oilfield site preparation and support structures.