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Neil
J.
McNabnay
Principal
214-292-4051
Neil McNabnay is a Principal in the Dallas office of Fish & Richardson P.C. His practice emphasizes all aspects of intellectual property litigation and prosecution.
Admissions
-
Texas
1997
- United States District Court for the Eastern District of Texas
- United States District Court for the Northern District of Texas
- United States District Court for the Southern District of Texas
- United States District Court for the Western District of Texas
- United States Patent and Trademark Office 2001
Clerkships
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The Honorable A. Joe Fish,
United States District Court for the Northern District of Texas,
1997 - 1998
Memberships and Affiliations
Member: Dallas-Ft. Worth Intellectual Property Law Association, Dallas Bar Association.
Other Distinctions
Named a "Texas Rising Star" in 2010 by Super Lawyers.
Education
-
BS,
University of Michigan
1994
Aerospace Engineering
summa cum laude
-
JD,
University of Michigan Law School
1997
cum laude
Executive Editor, Michigan Telecommunications and Technology Law Review
Experience
Litigation examples
Texas Instruments Incorporated v. Hyundai Electronics Industries Co., Ltd. - Represented TI in three cases in the E.D. Tex. and nine others filed around the world 1998. Obtained a settlement, valued at over $1.2 billion, in favor of TI after taking the first of over 30 semiconductor patents to trial in the E.D. Tex. and winning.
F&G Scrolling Mouse, LLC. v. IBM Corporation (M.D.N.C. 1999) - Obtained an extremely favorable settlement for IBM in defense of a patent infringement suit concerning scrolling mouse technology.
Alcatel USA, Inc. v. Tekelec, Inc. (E.D. Tex. 2000) - Obtained a favorable settlement for Alcatel by asserting two patents related to the routing of query messages by a signal transfer point in a telecommunications network.
National Presort, Inc. v. Bell & Howell Company Postal Systems, Inc. (N.D. Tex. 2001) - Obtained an extremely favorable settlement for Bell & Howell in defense of a patent infringement suit involving mail sorting technology.
Air Measurement Technologies, Inc. v. Scott Technologies, Inc. (W.D. Tex. 2001) and Air Measurement Technologies, Inc. v. Bacou USA Safety, Inc. (W.D. Tex. 2001) - Counsel for Scott and Bacou. Obtained a favorable settlement in defending against five patents relating to breathing apparatuses for firefighters.
Universal Surveillance Systems, Inc. v. Sensormatic Electronics Corporation (S.D. Fla. 2002) - Obtained a jury verdict in favor of Sensormatic, including an award of damages and permanent injunction, with respect to a Sensormatic patent covering electronic article surveillance tag technology.
Texas Instruments Incorporated v. Intergraph Corporation (Two cases in the E.D. Tex. 2003) - Obtained a favorable settlement for TI by asserting three patents related to computer clock speed control and an intelligent power switch and defending against three patents related to parallel processing.
Symbol Technologies, Inc. v. Hand Held Products, Inc. v. Avnet, Inc. (D. Del. 2003) - Obtained an extremely favorable settlement for Avnet in a patent infringement suit concerning 802.11a/g wireless cards.
Verve, LLC v. 3M Company (E.D. Tex. 2004) - Obtained an extremely favorable settlement for 3M in defending a patent infringement suit involving optical fiber network design.
Lonestar Inventions, LP v. Marvell Semiconductor, Inc. (W.D. Tex. 2004) - After successfully arguing a motion to transfer to the N.D. Cal., obtained a favorable settlement for Marvell in defense of a patent infringement suit involving a high capacitance structure in a semiconductor device.
Motorola, Inc. and Freescale Semiconductor, Inc. v. Micron Technology, Inc. (W.D. Tex. 2004) - Obtained an extremely favorable settlement for Micron in a patent infringement suit involving 34 mobile phone, semiconductor processing, and circuit patents asserted by Motorola/Freescale and Micron.
Wichita Falls Power Management, LLC v. Intel Corporation (N.D. Tex. 2005) - Obtained dismissal for Intel in a patent infringement suit involving microprocessor power management.
TronTech Licensing Incorporated v. Uniden America Corporation (E.D. Tex. 2006) - After invalidating 8 claims based on indefiniteness at Markman hearing, obtained favorable settlement for Uniden in patent infringement suit involving cordless telephone answering machine technology.
Constellation IP, LLC (n/k/a Presentation Specialist Technologies, LLC) v. Travelocity.com, LP and Sabre Holdings Corporation (E.D. Tex. 2006); Constellation IP, LLC v. Travelport, Inc., Orbitz, LLC, Orbitz Away, LLC, Trip Network, Inc. (d/b/a CheapTickets), Galileo International, LLC, and LQ Management LLC (E.D. Tex. 2007); and Constellation IP, LLC v. Netflix, Inc., IAC/InterActiveCorp, and Match.com, LLC (E.D. Tex. 2007) - Obtained dismissal for Sabre and Travelport and favorable settlements for Travelocity, Orbitz, CheapTickets, Galileo, La Quinta, Netflix, IAC/InterActiveCorp, and Match.com by defending patent infringement suits concerning an electronic, customized, presentation system that creates a visual impression characteristic that the customer associates with the seller.
Clear with Computers, LLC (f/k/a Orion IP, LLC) v. Isuzu Motors America, Inc. (E.D. Tex. 2007); Clear with Computers, LLC v. Canon U.S.A., Inc., Uniden America Corporation, Kohler Co., Callaway Golf Company, Plantronics, Inc., Altec Lansing Technologies, Inc., Haier America Trading, LLC, Bed Bath & Beyond, Inc., Buy Buy Baby, Inc., Dillard’s, Inc., The Gap, Inc., Banana Republic LLC, Old Navy LLC, Guess? Inc., Saks Incorporated, Club Libby Lu, Inc., Limited Brands, Inc., Victoria’s Secret Stores, LLC, Urban Outfitters, Inc., Anthropologie, Inc., and Free People, LLC (E.D. Tex. 2008); Clear with Computers, LLC v. Apple, Inc. (E.D. Tex. 2008); Clear with Computers, LLC v. Bassett Furniture Industries, Inc., The Boeing Company, Brunswick Corporation, Sea Ray Boats, Inc., Boston Whaler, Inc., Cabela’s, Inc., eBay, Inc., Halliburton Company, Herman Miller, Inc., Pitney Bowes, Inc., Polaris Industries, Inc., QVC, Inc., and Tommy Hilfiger USA, Inc. (E.D. Tex. 2009); and Clear with Computers, LLC v. Hyundai Heavy Industries Co., Ltd., Chico’s Brands Investments, Inc., and Pacific Sunwear of California, Inc. (E.D. Tex. 2009) - Obtained dismissal for Club Libby Lu and favorable settlements for Isuzu, Canon, Uniden, Kohler, Callaway, Plantronics, Altec Lansing, Haier, Bed Bath & Beyond, Buy Buy Baby, Dillard’s, Gap, Banana Republic, Old Navy, Guess?, Saks, Limited Brands, Victoria’s Secret, Urban Outfitters, Anthropologie, Free People, Apple, Bassett, Boeing, Brunswick, Sea Ray, Boston Whaler, Cabela’s, eBay, Halliburton, Herman Miller, Pitney Bowes, Polaris, QVC, Tommy Hilfiger, Hyundai, Chico’s, and PacSun in patent infringement suits concerning electronic proposal preparation system patents and a computer assisted part sales method patent.
Gemini IP, LLC v. Citrix Systems, Inc. (E.D. Tex. 2007) - Obtained a favorable settlement for Citrix in patent infringement suit concerning remote access software.
Accolade Systems LLC v. Citrix Systems, Inc. (E.D. Tex. 2007) - Obtained summary judgment for Citrix in patent infringement case involving remote access software by successfully arguing that Citrix had been released pursuant to a co-Defendant’s settlement agreement with the Plaintiff.
MHL Tek, LLC v. Subaru of America, Inc., Subaru of Indiana Automotive, Inc., and Fuji Heavy Industries, Ltd. (E.D. Tex. 2007) - Obtained dismissal of Fuji, dismissal of two of three asserted patents based on a lack of standing, and summary judgment of non-infringement with respect to the third asserted patent for Subaru of America and Subaru of Indiana Automotive in case involving tire pressure monitoring system patents.
DataTern, Inc. v. Avis Budget Group, Inc. and Hertz Corporation (E.D. Tex. 2009) - Obtained favorable settlements for Avis Budget and Hertz in patent infringement suit concerning middleware software that facilitates communication between an object oriented program and a relational database.
TQP Development, LLC v. Amazon.com, Inc. (E.D. Tex. 2009) and TQP Development, LLC v. Ticketmaster Entertainment, Inc. (E.D. Tex. 2009) - Obtained dismissal of Ticketmaster and a favorable settlement for Amazon in patent infringement suits relating to SSL encryption.
Parallel Networks, LLC v. Kayak Software Corporation, Amazon.com, Inc., and Google, Inc. (E.D. Tex. 2009) - Obtained dismissal of Kayak, Amazon, and Google in case involving applet technology.
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