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 wireless communication, telecommunication, RFID, network, optical, software, cloud computing and multi-tenant environment, semiconductor, 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.
J.D., University of Georgia School of Law 1993
Editor, Journal of Intellectual Property Law magna cum laude, Order of the Coif
B.S., University of Oklahoma 1986
U.S. Patent and Trademark Office 1995
Recognized in The National Law Journal, Trailblazers Energy & Environmental (2017).
Recognized in IAM Patent 1000, Texas, Prosecution (2014-2018).
Named a Texas “SuperLawyer,” (2012-2016).
Selected publications, speeches, and presentations
How to Hold the Value in Your Portfolio as US Law Erodes Patent Scope and Raises Bars to Enforcement, TexasBarCLE 11th Annual Course Advanced Patent Litigation, Texas, July 2015.
Working Effectively With the United States Patent and Trademark Office, Las Vegas, Nevada, March 2007.
Intellectual Property: Uses and Safeguards, Executive MBA program, Business School of Centenary College, Shreveport, LA, April 2006.
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.
Representation of Direct Drive Systems in its sale to FMC Technologies for approximately $120 million in cash.
Representation of Calnetix Power Solutions in its sale to GE Power Solutions.
Huawei Technologies Co. Ltd v. T-Mobile US, Inc. and T-Mobile USA, Inc. (E.D. Tex. 2016) Series of four related cases concerning T-Mobile’s infringement of 14 standard essential patents (or SEPs) related to 3GPP/LTE standards for core network equipment, as well as a declaratory judgment case regarding FRAND licensing obligations.
Nokia Solutions and Networks US LLC and Nokia Solutions and Networks Oy v. Huawei Technologies Co. Ltd. and Huawei Device USA, Inc. (E.D. Tex. 2016) After successfully obtaining an order severing Nokia’s counterclaims from another series of cases, defended Huawei in a series of four related lawsuits brought by Nokia alleging infringement of 9 patents concerning 3GPP/LTE standards for cellphones and tablets.
NXP v. BlackBerry et al. (M.D. Fla. 2012) – Represented Defendant BlackBerry (formerly RIM) against six asserted patents involving various technologies, including computer buses, WiFi, and semiconductor manufacturing; argued the Markman hearing that ultimately resulted in three dropped patents and a jury verdict of no infringement, and invalidity of the three remaining patents.
Cheetah Omni LLC v. Alcatel-Lucent USA Inc. et al. (E.D. Tex. 2011) – Obtained favorable settlement for Huawei in multi-patent litigation involving optical networking components.
Summit 6 LLC v. Research In Motion (N.D. Tex. 2011) – Represented RIM in a patent infringement action related to web-based media submission tools; obtained favorable settlement after Markman ruling.
In the Matter of Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras, and Components Thereof (337-703) and Research In Motion v. Eastman Kodak (N.D. Tex. 2008) – Represented RIM in multi-jurisdictional dispute, including i) Respondent in ITC investigation where 2 ALJs and the Commission invalidated Kodak’s asserted patent involving camera technology and ii) as a declaratory judgment Plaintiff in a multi-patent infringement action related to camera technology and data integration technology.
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 mobile payment company – strategic advice and patent portfolio development.
International communications company – strategic advice and counsel, litigation, patent portfolio development, post-grant and licensing related to communications, including wireless communications and standard essential patents (SEPs).
International semiconductor company – patent procurement related to semiconductor fabrication, memory, and digital signal processing.