Photo, William (Bill) D. McSpadden

William (Bill) D. McSpadden

Partner
Baker & McKenzie LLP

Biography

William McSpadden is a Chambers-recognized lawyer whose practice encompasses all aspects of patent law: litigation, prosecution, opinions, and portfolio counseling. William has litigated numerous cases, most of which have been in the Eastern District of Texas. He has prepared and prosecuted many patent applications, and has counseled clients on international portfolio management. He has also prepared legal opinions regarding patent infringement, validity, and enforceability issues.

Practice Focus

William's practice focuses on all aspects of patent law: prosecution, litigation, opinions, IP due diligence, and portfolio counseling. William has prepared and prosecuted numerous patent applications and has counseled many clients on international portfolio management. He has also prepared many legal opinions regarding patent infringement, validity, and enforceability issues. William has worked with a wide variety of technologies including computer software, semiconductors, telecommunications, medical devices, and financial systems. He has also conducted worldwide intellectual property due diligence for business transactions. A significant number of his patent cases have been in the Eastern District of Texas, but he has also handled cases in Delaware, the Northern District of Texas, the International Trade Commission, and many other jurisdictions.

Representative Legal Matters

William has had a significant role in the litigation of several patent cases, including the following:

  • Prosecuted a patent infringement case in the Eastern District of Texas related to welding technology. The case resulted in an agreed injunction and a financial settlement.

  • Defended a consumer electronics company in a patent infringement lawsuit in the Northern District of Texas and before the Patent Trial and Appeal Board related to cordless telephone devices. The asserted patents were invalidated by the PTAB.

  • Defended a financial software company in a patent infringement lawsuit in the Eastern District of Texas related to the processing of images of paper checks. The case was resolved when the asserted patents were invalidated by the PTAB.

  • Prosecuted a patent infringement case in the Northern District of Texas related to orthopedic medical devices. The case was settled on favorable terms.

  • Defended a banking institution in a patent infringement lawsuit in the Eastern District of Texas related to the processing of images of paper checks. The case was settled on favorable terms.

  • Defended a banking institution in a patent infringement lawsuit in the Eastern District of Texas related to the conversion of checks into ACH transactions. The case was settled on favorable terms.

  • Defended a trucking and logistics company in a patent infringement lawsuit in the Eastern District of Texas related to intermodal shipping containers. The case was dismissed with prejudice.

  • Defended a banking institution in a patent infringement lawsuit in the Eastern District of Texas related to restrictions on checking account transactions. The case was settled on favorable terms.

  • Defended a wireless telecommunications company in a patent infringement lawsuit in the Eastern District of Texas related to prepaid wireless telecommunications services. The case was settled on favorable terms prior to trial.

  • Defended a wireless telecommunications company in a patent infringement lawsuit in the Eastern District of Arkansas related to picture and video messaging services. The case was dismissed, with prejudice, after receiving favorable claim construction rulings.


Professional Honors

  • Texas Super Lawyers® in Intellectual Property, 2013
  • Recognized in Intellectual Property, Chambers & Partners, 2009-2015

Professional Associations and Memberships

  • American Intellectual Property Law Association - Member

Admissions

  • Texas~United States (1997)
  • U.S. Patent & Trademark Office~United States (1998)
  • U.S. District Court, Northern District of Texas~United States
  • U.S. District Court, Eastern District of Texas~United States
  • U.S. Court of Appeals, Federal Circuit~United States

Education

  • University of Houston Law Center (J.D.) (1997)
  • University of Texas at Austin (B.S.E.E.) (1992)

Languages

  • English