Overview

Terry Stalford's practice emphasizes U.S. and international patent portfolio development, patent litigation, infringement risk management, and licensing in the software, communications, and energy fields.

He also provides general intellectual property counseling on other strategic issues, including patent mapping, patent categorization, and industry benchmarking.

Terry's clients are among the top technology companies in the world. He works with clients to build world-class patent portfolios and navigate complex litigation issues across a wide range of technologies, including wireless communications, telecommunications networks, software, artificial intelligence and machine learning, blockchain, cloud computing and multi-tenant environments, semiconductors, and energy. At the Patent Trial and Appeal Board, Terry has provided oversight for over 90 inter partes reviews since 2017. His work on behalf of clients has been widely recognized; for example, the Patent Scorecard published by The Wall Street Journal ranked a patent portfolio that Terry built with a small client as one of the strongest in the energy and environmental industries. He also regularly leads public conferences and in-house training events at client sites touching on opinions, licensing, patent prosecution, post-grant proceedings, and patent litigation.

Terry is committed to using his practice to improve the lives of others through technological innovation. For the past several years, he has provided pro bono legal representation to Workshops for Warriors, a charitable organization that trains combat veterans for post-military careers in advanced manufacturing, and LIMBS International, which provides affordable, sustainable prosthetic solutions to individuals in developing countries. He also represents financially under-resourced independent inventors and small businesses in U.S. Patent and Trademark Office proceedings through the Federal Circuit Bar Association's PTO pro bono program.

Before entering the practice of law, Terry had a distinguished career in the engineering field. He worked as a process/facility engineer for Hercules, where he programmed the control system for the facility’s fully automated processes, as well as designed the facilities and processes for a modernization project. He also served as a manager for Hercules, where he set and enforced management policy and ensured safety, production, and quality control.

Experience

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 related to 3GPP/LTE standards for core network equipment, as well as a declaratory judgment case regarding fair, reasonable, and non-discriminatory 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 nine 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 U.S. International Trade Commission investigation where two Administrative Law Judges 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.

International semiconductor company – Patent procurement related to semiconductor fabrication, memory, and digital signal processing.