First Admitted: 1993, Texas

Professional Webpage: https://www.munckwilson.com/attorney/william-a-munck/

Bar/Professional Activity:

Texas, 1993 New York, 1994 U.S. Patent and Trademark Office U.S. Court of Appeals, 5th Circuit U.S. Court of Appeals, 11th Circuit U.S. Court of Appeals, Federal Circuit U.S. District Court, Northern District of Texas U.S. District Court, Eastern District of Texas U.S. District Court, Southern District of New York U.S. District Court, Eastern District of New York U.S. District Court, Middle District of Florida U.S. District Court, District of Colorado U.S. District Court, Southern District of West Virginia U.S. District Court, Southern District of California
American Bar Association Member New York State Bar Association Member State Bar of Texas, Intellectual Property Law Section Member Dallas Bar Association, Intellectual Property Law Section Member Computer Law Association Member Dallas-Fort Worth Patent and Trademark Association Juvenile Diabetes Research Foundation, Board of Directors 1999-2005, 2010- Present, Member STARTech Early Ventures, L.L.P., Advisory Board 1997-2004, Member State Bar of New York United States Patent and Trademark Office United States Lacrosse, North Texas Chapter, 2005 - 2011

Representative Clients:

Numerous technology clients in preparation and prosecution of domestic and foreign patent applications, and related intellectual property matters. Semiconductor manufacturer to investigate third-party infringement claim, determined non-infringement and invalidity of subject patents, rendered legal opinions regarding same, and provided deposition testimony. Vending company in assertion of patent infringement claim in the Eastern District of Texas, and defended reexamination proceeding with the United States Patent and Trademark Office. Vending company in five patent infringement actions relating to vending machines in West Virginia district court and on appeal to the Federal Circuit Court of Appeals, secured stay pending final outcome of reexamination proceeding, and developed and asserted patent infringement counterclaims. International pharmaceutical company in two patent infringement cases against a generic manufacturer in the Northern District of Texas Telecommunications developer in negotiation with an international telecommunications equipment provider of jointly developed and jointly owned intellectual property rights. Wireless hardware manufacturer in negotiations with patent licensing entity regarding purportedly standards-based patent rights; secured points-based discounts reducing proposed licensing fees to only negligible amounts. Medical device company in defense of action to declare patents not infringed or invalid. Advanced optoelectronic company in a patent infringement and trade secret action in the United States District Court for the Eastern District of Texas. Government contractor in a trademark and unfair competition dispute in Federal Court in Florida.

Special Licenses/Certifications:

New York State Bar, 1994
United States Patent and Trademark Office, 1993

Honors/Awards:

Maurice A. Deane School of Law at Hofstra University Hempstead, New York 1992 Juris Doctorate Honors: with Highest Honors and List Distinction Law Journal: Hofstra Labor Law Journal, Member, 1991 - 1992
Best Lawyers® 2020 Sports Law “Lawyer of the Year” Dallas/Fort Worth
Dallas Bar Foundation, Life Fellow
American Bar Foundation, Life Fellow
Texas Bar Foundation, Life Fellow
Lawdragon’s 500 Leading Lawyers in America
Best Lawyers in Dallas, D Magazine, 2019
Best Lawyers in America, Woodward White, Inc.2006 – 2020
Chambers and Partners USA Guide: America’s Leading Business Lawyers (Intellectual Property) 2004-2019
Top Intellectual Property Lawyers, Super Lawyers Corporate Counsel Edition, 2008-2012
Top 100 Super Lawyers in DFW, Thomson Reuters, 2012, 2015 and 2016
Texas Super Lawyers, Thomson Reuters, 2003 – 2019
IP Star, Managing Intellectual Property Magazine, 2019
Distinguished Leader, Professional Excellence Awards, Texas Lawyer, 2017
Distinguished Alumni, Maurice A. Deane School of Law at Hofstra University, 2016
Repeatedly listed by Chambers & Partners as a Top IP Attorney, Named D Magazine's Best Lawyers in Dallas, 2007 to 2013, Named Lawdragon's 500 Leading Lawyers in America, 2006 to 2009, Named Lifetime Fellow of the Dallas Bar Foundation, 2009 to 2013, Named Best Lawyer in Patent Law by U.S. News and The Best Lawyers in America, 2011 to 2013
The Dallas 500– The Most Powerful Business Leaders in Dallas-Fort Worth by D CEO Magazine 2020

Educational Background:

Hofstra University, Hempstead, New York 1987, B.S. Computer Science, Major: Electrical Engineering and Mathematics
Hofstra University, Hempstead, New York 1989, M.S. Computer Science and System Architecture, Honors: with Honors

Scholarly Lectures/Writings:

Safeguarding Your Assets: How You Can Protect Your Intellectual Property Smart Business Dallas, April 2007
Weathering The Storm of False Marking Claims, Law 360, June 11, 2010
New rules: The new patent office rules create hubbub Smart Business, December 2008
Make sure you’re protected: Protecting intellectual property from employees Smart Business, June 2008

Industry Groups:

Defense Industry
Digital Media
Electro-mechanical
Energy
Gaming
Medical Devices
Pharmaceutical
Semiconductor
Software
Wired Communications
Wireless Communications

William A. Munck