PATENT LITIGATOR AND IP ATTORNEY: DAVID G. HENRY

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Baylor listened to his plea, allowed him to enroll, and even came up with a viable financial path for the young man and his wife, Priscilla. Henry proved the university made a good decision. He made the dean’s list as a pre-med major during his first semester and soon was tutoring other pre-med students. However, toward the end of his undergraduate years, Henry realized that his other, long- time interest — law — was a more financially viable option at the time than medical school. So he applied to Baylor Law School. “As it turns out, the fortuitous combination of a science undergraduate degree and law degree qualified me to take the patent bar and become a patent attorney,” he says. Henry, a lieutenant colonel in the United States Air Force’s Auxiliary, pilots his own planes. Flying allows him to go to his clients, so he and Priscilla can live in Waco and get involved with Baylor activities. Since 1994, he has passed on his knowledge of IP law to students covering patent, copyright, trade secrets, and trademark law in his classes. BAYLOR LAW SCHOOL ADJUNCT PROFESSOR DAVID HENRY TAKES HIS INTELLECTUAL PROPERTY EXPERTISE FAR AND WIDE Itisan understatement to say that David Henry ( JD ’85) is a busy man. He is a member and chair of the intellectual property and export control compliance section at Looper Reed & McGraw, P.C. in Dallas. He has served as adjunct professor at Baylor Law School for more than 20 years. Henry latest venture is with BRIC and the Innovative Business Accelerator (IBA). The IBA will provide businesses with infrastructure, training and connections, and allow them to effectively market themselves. According to Gregory Leman, director of the IBA, the accelerator will provide various kinds of help, from instructions on filing patents to business plans, and raising money. Henry will office in the BRIC. “I will be the IP consultant for the companies that work with BRIC and IBA,” he says. “Numerous companies fail because they didn’t attend to their IP at the start.” So why does he invest so much time with his alma mater? “I have a moral duty to give back, and it is the most rewarding thing I have ever done,” he says. “Baylor and the Baylor Family provided or made possible the most meaningful memories my family and I have. Baylor affords the contexts for the best aspects of my present life and some of my most meaningful relationships, and continually gives me hope and excitement for the future.” He teaches in the Hankamer School of Business’ renowned entrepreneurship program. He helps lead the i5 (Immersion Into International Interdisciplinary Innovation) program at Baylor, and soon he will begin work with the Baylor Research and Innovation Collaborative (BRIC). Oh, and he also advises a number of Baylor student groups. Henry says he does all this because Baylor saved his life by giving him a chance when his high school academics were less than stellar. “During my late teens and early 20s, I drifted from one low-wage, dead-end job to another. I had become my own worst nightmare — a person who had nothing of significance to offer others. I decided then and there to turn things around. I believed that, if I could somehow get into Baylor, I could probably turn things around. For whatever reason, it simply had to be Baylor,” he says. Baylor Law School Adjunct Professor David Henry, pictured here at the Baylor Research and Innovation Collaborative (BRIC), teaches intellectual property law. “There are countless damaging myths about IP law,” Henry says. “In a world where 81 percent of the value of all S&P companies rests in their intellectual property, and much litigation arises from businesses that don’t know the issues, we need to educate lawyers and business people alike on these issues.” Henry has found there isn’t much difference between teaching law students or business students; the message in the unfamiliar field of IP is much the same for both. “We start from ground zero when it comes to IP law,” he says. Henry adds that some of the latest IP issues include the America Invents Act, which switches the U.S. patent system from a “first to invent” to a “first inventor to file” system; and the difference between U.S. and overseas rules, which are surprisingly uniform but varied in enforcement. His i5 students practice what they have learned under Henry’s tutelage. The i5 allows a group of Baylor students, including IP track law students, to join forces with Chinese students and advise actual companies about doing business in China. The students serve as consultants and help to identify and create recommendations for commercializing products and services and, among many other topics, protect a company’s intellectual property. Henry thinks the i5 is the only entrepreneurship program that combines business, engineering, and IP. “I spend about six weeks in China with my students. These students are dealing with real issues that affect companies, including IP issues. I assess what the students are doing and critique their presentations. In addition to the i5 work, I have been advocating with Chinese officials about the evolution of China’s IP laws and enforcement,” he says.

David Henry in DOCKET CALL Magazine

Prof. David G. Henry, Sr.

www.davidghenry.com

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Registered Patent Attorney

Intellectual Property Litigation, Prosecution and Transactions Attorney

Managing Partner (Waco Office) - Munck, Wilson & Mandala

www.munckwilson.com

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Patent Law Professor

Baylor Law School

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Entrepreneurship Professor (Intellectual Property)

Hankamer School of Business

Baylor University

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Expert Witness on Patent, Trademark, Copyright and Trade Secret Issues

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832-497-4724 (Houston, Texas) * 214-613-3990 (Dallas, Texas) * 254-744-4724 (Waco, Texas)

202-657-4724 (Washington, D.C.) 512-333-1461 (Austin, Texas)

+852 8197 4724 (Hong Kong) * +44 020 3239 4724 (London)

+1 866-593-1933 (Fax)

Twitter: @IPLawByDHenry

**CLICK HERE FOR CONTACT INFORMATION**

Areas of Practice

Mr. Henry has extensive experience in assisting his clients in identifying, strategically managing and protecting domestic and foreign Intellectual Property assets, prosecuting or defending patent infringement and trademark infringement claims in federal courts throughout the United States, and in identifying and managing Export Control issues. Mr. Henry has had some emphasis in the realm of medical and surgical devices and pharmaceuticals, but has prosecuted and litigated patents, and dealt with Export Control issues relating to a wide variety of technologies, including such areas as petroleum exploration technologies, electrical grid management systems, prosthetic joints, food and beverage production technologies, and devices, systems used in space missions, and animal care products.

At any given time, Mr. Henry is involved in a number of federal court patent infringement or trademark infringement actions throughout the United States, as well as certain, selected activities at the United States Patent & Trademark Office ("U.S.P.T.O."). Mr. Henry's experience and circumstances are such that he is particularly well-suited for assisting clients in intensive, fast-paced patent litigation arenas, such as the Eastern District of Texas. Alongside his longstanding legal career, he has served as a patent law professor at Baylor Law School since 1994, and now teaching in the Entrepreneurship Program of Baylor's Hankamer School of Business.

Mr. Henry's Practice Emphasizes:

§ Patent Litigation Prosecution and Defense.

§ Patent and Trademark Strategic Planning, Prosecution, and Licensing

§ Trademark and Trade Secret Litigation

§ Export Control Compliance and Mangement

Past and Present Court and Agency Admissions

§ U.S. Patent & Trademark Office
§ United States Supreme Court

§ U.S. Courts of Appeals for the Federal Circuit

§ U.S. Court of Appeals for the Fifth Circuit

§ U.S. District Court for the Eastern District of Texas

§ U.S. District Court for the Southern District of Texas

§ U.S. District Court for the Western District of Texas

§ U.S. District Court for the Northern District of Texas

§ U.S. District Court for the District of Rhode Island

§ U.S. District Court for the District of Massachusetts

§ U.S. District Court for the District of Colorado

§ U.S. District Court for the Southern District of California

§ U.S. District Court for the Eastern District of Missouri

§ U.S. District Court for the Southern District of Illinois

§ U.S. District Court for the Eastern District of Wisconsin

§ U.S. District Court for the District of Idaho

§ Chancery Court of Delaware

§ Canadian Patent Office

Professional/Civic Activitiess

§ Baylor University Faculty Advisor and Mentor to members of Delta Delta Delta and other student organizations

§ Frequent Bar Association (State and Local) and Professional Groups Speaker

§ United States Air Force Auxiliary, Lieutenant Colonel (Wing Public Affairs Officer)

§ Volunteer Pilot for Childrens Medical Emergencies Group

§ Greater Waco Area Aviation Alliance Advisor

§ Vice Chair: Board of Directors of the Military Child Education Coalition

Notable Speaking Engagements, Citations and Publications

§ 2012: Preparing Your Device Portfolio for Litigation: Limiting Liability and Managing and Reducing Costs, Medical Device Patents Conference, American Conference Institute, Boston, MA

§ 2012: The Impact of Recent Patent Law Cases and Developments, 2012 Ed., Aspatore Press

§ 2012: "Getting IP Right: How to Avoid the Landmines that Trademarks, Copyrights and Patents Can Create" in SmartBusiness Magazine

§ 2011: State Bar of Texas - Essentials of Business Law (Houston, Texas) - "The Basics of Patents, Trademarks and Copyrights for Non-IP Attorneys"
§ 2010: Medical Device Patent Litigation (New York City) - "The 'Should We?', 'When Do We?' and 'When We Do, What Then?' of Markman Hearings in Patent Litigation"

§    2006: State Bar of Texas Convention - "The Myths and Traps of Intellectual Property"
§    2000: Texas Association of Defense Counsel Convention - "Defensive Thinking in the Intellectual Property Realm"
§    1999: Intellectual Property, "New Frontiers In Marital Property Law" - The University of Texas School of Law Marital Property Institute - cited at Alsenz v. Alsenz, 101 S.W.3d 648, Court of Appeals of Texas, Houston (1st Dist.) (2003).
§    1998 - Present: Accredited CLE Presenter for Multiple Bar Associations

Primary State Bar Membership

§ Supreme Court of the State of Texas

Education

§ Juris Doctor, Baylor University, 1985

§ B.A., Baylor University, 1982 (with honors)

Selected, Representative Experience

§    Representation of medical device company in parallel federal and Delaware Chancery Court cases involving theft of trade secrets, unfair competition, and breach of confidentiality agreements
§    Representation of publicly held medical device company in defense of patent infringement case, successfully arguing appeal of adverse judgment to the United States Court of Appeals for the Federal Circuit (Washington, D.C.) - Pressure Products Medical Supplies, Inc. vs. Greatbatch, Ltd., 599 3d 1308 (Fed. Cir. 2010).  http://www.cafc.uscourts.gov/images/stories/opinions-orders/08-1602r.pdf
§    Representation of publicly held corporation as plaintiff in patent infringement litigation involving non-U.S. infringer
§    Representation of privately held, multi-national company in multiple cases involving copyright, patent, and trademark infringement
§    Representation of petroleum exploration equipment company in two patent infringement matters
§    Representation of privately held pet supply in patent infringement and breach of contact case
§    Representation of soft drink company in trademark infringement action against rival manufacturer
§    Representation of professional association in service mark infringement case and appeal - Society of Financial Examiners v. National Association of Certified Fraud Examiners Inc., Etals, 41 F.3d 223 (5th Cir. 1995)

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DAVID G. HENRY, SR. - PATENT ATTORNEY * PATENT, TRADEMARK & COPYRIGHT LITIGATION ATTORNEY * INTELLECTUAL PROPERTY LAW PROFESSOR * IP and CERTIFICATED MEDIATOR (IP AND COMPLEX LITIGATION)