J. Roger Williams, Jr.
Counsel
Roger’s practice focuses on intellectual property (IP) and business litigation. Roger’s IP and technology practice includes advice and counseling, procurement, licensing and acquisition, opinions, inter partes reexamination at the Patent and Trademark Office, administrative hearings before the International Trade Commission (ITC), and litigation in state and federal courts regarding all aspects of patents, trademarks, copyrights and trade secrets. His IP litigation experience includes patent infringement, invalidity and inventorship disputes, trademark infringement, false advertising and domain name disputes, misappropriation of trade secrets, and breach of development, licensing and supply agreements.
Technical subject areas of litigation matters handled by Roger include semiconductor memory chips, fluid flow meters, large-scale optics manufacturing, mainframe utility software, acoustic paneling, airplane components, extrusion molding methods, gas chromatography, bathroom fixtures, ground fault circuit interrupters, Web-based financial transaction security, data redundancy, Web server software, fixed annuities, and casing running and drilling tools.
Roger’s business litigation practice includes trials, appeals and arbitrations across the spectrum of commerce. Since 1988, Roger has handled commercial disputes involving civil fraud, construction, legal malpractice, accounting and consulting malpractice, mail fraud and wire fraud, breach of license agreement, breach of supply agreements, wages and employment, lender liability, bankruptcy, conversion of collateral, breach of fiduciary duty, will disputes, Freedom of Information Act, partnership disputes and class action defense.
Representative Experience
- Lead counsel for plaintiff in trademark infringement dispute in W.D. Tex. between two life insurers (2009-2011)
- Defense of patent infringement claims in E.D. Tex. in cases involving Web servers, Internet security, data redundancy, and oil field technology
- Lead counsel in defense of patent infringement claims in C.D. Ca. in case involving mapping technology
- Markman Hearing (first chair) in patent infringement dispute involving design and utility patents relating to bathroom fixtures (April 2006)
- Arbitration (first chair) of dispute arising out of breach of supply agreement regarding 3-D holographic display devices (November 2005)
- First chair at trial and handled appeal in defense of a national bank in a suit brought by the State of Texas for conversion of collateral (2004-2005)
- Petitioned the U.S. Supreme Court to hear an appeal of a copyright preemption matter (2004)
- Served as lead appellate counsel in securing reversal by Texas Supreme Court of an order certifying a nationwide class action (May 2005)
- Patent prosecution docket includes patents in software, data encyrption and security, analytical laboratory equipment and semiconductor memory devices
Publications
- Recent Cases Should Make Software Licensors Review Their Distribution Methods and License Terms (and They May Even Make Us Look at Open Source Licenses in a Different Way) IP and Technology Developments - July 2011 (July 21, 2011)
In The News
- Quoted in "How SOPA Might Affect Local Industry," KUT Experience Austin Texas (January 16, 2012)
- Quoted in "Local Company Devises New Online Model for Shared Buying," Austin Business Journal (December 9-15, 2011)
Events
- "Know the Rules Before Trial (written and unwritten)," Capital Area Paralegal Association (May 2011)
- "Major Recent Patent Law Cases and Their Impact on Licensing Strategies,” Co-Panelist, IP Licensing in 2009 (March 2009)
- “Copyrights, Trademarks and Trade Secrets,” Webinar Co-Panelist, National Council of Entrepreneurial Tech Transfer (January 2009)
- “Ties That Bind (or Maybe Not): A Survey of Recent Cases Addressing Scope of Use and Downstream Restriction of Licensing Agreements,” presented to the Association of Corporate Counsel, Austin Chapter (November 2008)
- “Overview of Intellectual Property Law in the United States,” presented to The University of Texas at Austin’s IC2 - Global Commercialization Program (September 2007)
- "Medimmune v. Genentech: The Supreme Court upends licensing law," ACCA (Association of Corporate Counsel, Austin Chapter) Newsletter (March 2007)
- "Document Retention and E-Discovery," co-presented to the Association of Corporate Counsel, Austin Chapter (October 2006)
- “Top 10 IP Pitfalls,” presented at The University of Texas School of Law’s Corporate Counsel Institute, Houston, Texas (April 2006)
- “Contractual and Other Limitations on Damages,” presented at The University of Texas School of Law’s The Damages Institute, Houston and Dallas, Texas (Fall 2004)
- “Recent Developments in Texas State Class Action Law,” presented at the State Bar of Texas Antitrust & Business Litigation Section’s Litigating Class Actions: 2004 Hot Topics, Houston, Texas (April 2004)
