Brian McCormack

Brian C. McCormack

Partner
Baker & McKenzie LLP

Biography

Brian McCormack has been with the Dallas office of Baker McKenzie since 1996. He mainly handles intellectual property counseling, patent office trials, and patent litigation. Having been with the firm for twenty years, Brian is a thoroughly international IP lawyer and has helped clients with numerous legal issues in Asia, Europe, and Latin America. Formerly an engineer and patent agent at Texas Instruments, Brian has always had a focus on and aptitude for technology, and has led teams of lawyers in diverse industries. Brian received his JD from Southern Methodist University and holds both bachelor’s and master’s degrees in electrical engineering.

Practice Focus

Brian handles a broad range of patent matters, ranging from handling patent and other IP litigations in district court to acting as lead counsel in patent trials before the USPTO, to advising clients in patent prosecution and portfolio matters, to counseling clients relating to their business-related IP issues. Brian has argued claim construction positions in district court, has taken and defended the depositions of expert witnesses, fact witnesses, and corporate representatives. Brian has also appeared as a fact witness in ITC litigation to provide testimony in his client’s successful defense of the enforceability of the client’s patents. Brian further has experience investigating and negotiating IP disputes before they reach the litigation stage. Brian also has more than 20 years of experience assisting clients in patent portfolio management, patent drafting, and patent prosecution. Among the many technologies he has handled, a major focus has been electrical, computer, and software technologies, including such technologies as applied to cinema projection technology, consumer products, semiconductor devices and manufacturing techniques, advanced software and business methods, radio frequency identification (RFID) tags and systems, optical devices and optical communications networks, and computer and television display technologies.

Representative Legal Matters

  • Lead counsel for a cinema technology company (patent owner) in multiple IPR proceedings, upholding the patentability of all claims in 6 out of 7 IPRs filed against the client’s patents, and upholding the patentability of most claims in the 7th IPR. Successfully argued the matter before the PTAB.
  • Lead counsel for a semiconductor manufacturing company (petitioner), successfully establishing unpatentability of claims that had been asserted against the client’s customers. Successfully argued the matter before the PTAB.
  • Lead counsel for a SaaS (Software-as-a-Service) client as petitioner in an IPR, filing five petitions against the client’s opponent, resulting in a favorable settlement of a matter being litigated in the Northern District of California.
  • Acted for a semiconductor component manufacturer in the Eastern District of Texas through trial and early appeal stages. Lead a litigation team in the matter through trial and favorable settlement.
  • Acted as lead counsel for a group of 11 independent defendants in a huge litigation filed against more than 200 retailers in the Eastern District of Texas based on geolocation technology. Successfully negotiated settlement on behalf of all clients after discovery and claim construction procedures.
  • Acted as lead counsel for a SaaS company as defendant in a patent matter filed in Delaware. Established key invalidity positions and pursued an inter partes reexamination in the matter that lead to favorable settlement for the client.
  • Acted for a financial services company in a matter in the Eastern District of Texas against a non-practicing entity that was widely considered to be the reason that Covered Business Method proceedings were included in the America Invents Act of 2011. Had lead role in establishing invalidity evidence for the matter, which settled favorably shortly before trial.
  • Acted for a financial services company in the Eastern District of Texas in defense of a patent suit filed asserting that the company’s web security technology infringed a patent owned by the plaintiff. Lead a search effort to find a key piece of prior art that when presented to the opponent lead to an early and favorable settlement in the case.
  • Acted for a Japanese video game manufacturer in a patent infringement action brought in Massachusetts and appealed to the Federal Circuit. Summary judgment of non-infringement given and upheld in favor of client.
  • Acted for a Taiwanese manufacturer of non-volatile memory in a patent infringement action brought in the Northern District of California. Summary judgments dismissing one patent and majority of claims in other patent granted. Case settled on favorable terms.

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Professional Associations and Memberships

  • State Bar of Texas
  • American Bar Association
  • American Intellectual Property Law Association

Admissions

  • U.S. Court of Appeals, Federal Circuit~United States (1997)
  • U.S. District Court, Northern District of Texas~United States (1996)
  • U.S. District Court, Western District of Texas~United States (1996)
  • Texas~United States (1996)
  • U.S. District Court, Eastern District of Texas~United States (1996)
  • U.S. Patent & Trademark Office~United States (1993)
  • U.S. Court of Federal Claims~United States (2017)

Education

  • Southern Methodist University (J.D. Order of the Coif) (1996)
  • University of Texas (M.S.E.E.) (1990)
  • Iowa State University (B.S. Electrical Engineering magna cum laude) (1986)

Languages

  • English