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Terry J. Stalford

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Office: Dallas
Phone: 214 747-5070
Email: stalford@fr.com



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Practice areas
Patents
Licensing
Trademarks
 
Technology areas
Telecommunications
Optics
Semiconductors
Software
Internet
Business Methods
Mechanical Engineering
Petroleum Engineering
 
Education
University of Oklahoma B.S. Engineering 1986
University of Georgia School of Law J.D. 1993 magna cum laude, Order of the Coif
Editor, Journal of Intellectual Property Law

Professional experience
Terry Stalford is a Principal in the Dallas office of Fish & Richardson P.C. His practice includes all aspects of intellectual property law, with particular emphasis on patent litigation, infringement risk management, patent procurement, and licensing in the software, electronics, communications, and energy fields.

Mr. Stalford works with clients to establish and manage comprehensive intellectual property programs that add capital value to clients and protect its products and markets. Mr. Stalford provides patent procurement counsel to clients developing innovative software, semiconductor, wireless communication, telecommunication, RFID, network, optical system, business methods, mechanical device, oil and gas, and other technologies. For example, the Patent Scorecard published by the Wall Street Journal ranked a patent portfolio that Mr. Stalford built with a small client as one of the strongest in the energy and environmental industry.

Mr. Stalford has extensive experience in domestic and international licensing transactions. He also provides general intellectual property counseling on other strategic intellectual property issues including risk assessment, patent opinions, patent mapping, patent categorization, and industry benchmarking.

Representative engagements
Worldwide software company - development and management of a patent portfolio directed to business software solutions, applications, and services.

Major financial software company - development and management of a patent portfolio revolving around financial reporting and outsourcing capabilities to banks and finance companies; counsel in license negotiations, litigation, and due diligence projects.

Global oilfield service company - development and management of a patent portfolio revolving around equipment, systems and processes for drilling and production of oil and gas; license negotiations, and litigation.

Exploration and production company - development and management of a dominant patent portfolio directed toward unconventional resources; counsel in license negotiations, joint development agreements, litigation, and other special projects.

International communications company - strategic advice and counsel related to wireless communications and messaging.

International semiconductor company - patent procurement related to semiconductor fabrication, memory, and digital signal processing.

Litigation examples
Arete Power, Inc. v. Vycon, Inc. et al - (D. NV) - Counsel for defendants in patent infringement litigation of multiple patents involving energy storage flywheels.

CNX Gas Co. LLC et al v. CDX Gas, LLC - (W.D. Pa.) Counsel for counterclaim plaintiff CDX in suit alleging infringement of multiple patents direct to improved drilling methods for draining coal bed methane from coal seams. Case settled shortly before scheduled trial.

Landmark Graphics Corp. et al v. Paradigm Geophysical Corp. et al. - (S.D. Texas) - Counsel for plaintiffs in patent infringement litigation involving 3D seismic imaging and defending against breach of contract, trade secret, and other counterclaims. Pending

Emergis Technologies, Inc v. South Carolina Public Service Authority - (D. SC) - Counsel for defendants in patent infringement litigation involving electronic invoicing and payment systems. Pending.

Selected publications, speeches, and presentations
Intellectual Property: Uses and Safeguards, Executive MBA program, Business School of Centenary College, Shreveport, LA, April 2006.

Working Effectively With the United States Patent and Trademark Office, Las Vegas, Nevada, March 2007.

Comments on the USPTO Rule Proposals Published January 3, 2006, Japan, May 2006.

Opinions of Counsel, United States Patent Law and Litigation, Munich, December 2005.

Patent Reform and Legislative Changes on the Horizon: What You Need to Know About the Changing Patent Process & IP Protection, Dallas, Texas, October 2005.

Standardization in Optical Networking, United States Patent and Trademark Office Technology Fair, June 2003.

Bar admissions
Admitted to the bar in Texas and Georgia.
Registered to practice before the United States Patent and Trademark Office.