- Intellectual Property Litigation
- Inter Partes Reviews
- IP Audits and Legal Opinions
- IP Due Diligence
- IP Portfolio Management and Counseling
- Media and First Amendment Litigation
- Mergers and Acquisitions
- Securities and Corporate Finance
- Technology Transactions
- Trade Secrets, Restrictive Covenants and Unfair Competition
- Trademarks, Trade Dress and Domain Names
- Venture Capital and Private Equity
William A. Munck
William Munck is the Managing Partner of Munck Wilson Mandala, LLP and Chairman of the Firm's Intellectual Property Section. Mr. Munck has more than twenty years of experience counseling clients regarding development of market-focused offensive and defensive intellectual property portfolios. His technical expertise is in the hardware, software, firmware, gaming, wired/wireless communication, energy, defense and medical device/healthcare fields.
Mr. Munck's practice emphasizes long-range corporate strategies for the domestic and foreign procurement, management and enforcement of intellectual property rights; defense against third-party infringement claims, including prosecution of IPR, reexamination and other third-party proceedings; analysis, development and rendering of legal positions and opinions; and negotiation of technology transfers and related intellectual property issues associated with private and public financings, mergers, acquisitions, and industry and patent troll licensing matters.
Mr. Munck began his career with a full-service Texas-based law firm and a prominent New York IP litigation boutique.
He also worked for several years as a lead software engineer and project manager with Axiom Systems, Inc. in New York, where Mr. Munck managed a design team responsible for designing and developing an industrial laboratory control system.
Since inception of the annual Texas Super Lawyer award by Texas Monthly Magazine in 2003, Mr. Munck has been selected repeatedly by his peers. Since inception of the annual National Super Lawyer award by Corporate Counsel Magazine in 2008, Mr. Munck has also been selected repeatedly by his peers. Likewise, Mr. Munck is repeatedly recognized by Chambers and Partners Publishing as one of the Best Intellectual Property Attorneys in the Southwest, by D Magazine as one of the Best Lawyers in Dallas, by LawDragon.com as one of the 500 leading lawyers in America, by the Dallas Business Journal to The Defenders list as one of the top defense attorneys in Dallas, and has been named a "Fellow" in the Dallas Bar Foundation by his peers.
Representative Experience Since January 2008:
- Numerous technology clients in preparation and prosecution of domestic and foreign patent applications, and related intellectual property matters.
- Semiconductor manufacturer to investigate third-party infringement claim, determined non-infringement and invalidity of subject patents, rendered legal opinions regarding same, and provided deposition testimony.
- Vending company in assertion of patent infringement claim in the Eastern District of Texas, and defended reexamination proceeding with the United States Patent and Trademark Office.
- Vending company in five patent infringement actions relating to vending machines in West Virginia district court and on appeal to the Federal Circuit Court of Appeals, secured stay pending final outcome of reexamination proceeding, and developed and asserted patent infringement counterclaims.
- International pharmaceutical company in two patent infringement cases against a generic manufacturer in the Northern District of Texas
- Telecommunications developer in negotiation with an international telecommunications equipment provider of jointly developed and jointly owned intellectual property rights.
- Wireless hardware manufacturer in negotiations with patent licensing entity regarding purportedly standards-based patent rights; secured points-based discounts reducing proposed licensing fees to only negligible amounts.
- Medical device company in defense of action to declare patents not infringed or invalid.
- Advanced optoelectronic company in a patent infringement and trade secret action in the United States District Court for the Eastern District of Texas
- Government contractor in a trademark and unfair competition dispute in Federal Court in Florida.
- Texas, 1993
- New York, 1994
- U.S. Patent and Trademark Office, 1994
- U.S. Court of Appeals, 5th Circuit
- U.S. Court of Appeals, 11th Circuit
- U.S. Court of Appeals, Federal Circuit
- U.S. District Court, Northern District of Texas, 1994
- U.S. District Court, Eastern District of Texas
- U.S. District Court, Southern District of New York, 1994
- U.S. District Court, Eastern District of New York, 1994
- U.S. District Court, Middle District of Florida
- U.S. District Court, District of Colorado, 2000
- U.S. District Court, Southern District of West Virginia
- U.S. District Court, Southern District of California
- Weathering The Storm of False Marking Claims, Law 360, June 11, 2010
- Make sure you're protected: Protecting intellectual property from employees, Smart Business, June, 2008
- New rules: The new patent office rules create hubbub, Smart Business, December, 2008
- Safeguarding Your Assets: How You Can Protect Your Intellectual Property, Smart Business Dallas, April, 2007
- Repeatedly listed by Chambers & Partners as a Top IP Attorney
- Named in Best Lawyers in America for intellectual property law, 2006 - 2014
- Named D Magazine's Best Lawyers in Dallas, 2011 - 2014
- Named Lawdragon's 500 Leading Lawyers in America, 2006 - 2009
- Named Lifetime Fellow of the Dallas Bar Foundation, 2009
- Named National Super Lawyer, Super Lawyers - Business Edition, 2008 - 2013
- Named Texas Super Lawyer, Texas Monthly Magazine, 2003 - 2013
- Named Best Lawyer by U.S. News annually since 2006
Professional Associations and Memberships:
- American Bar Association Member
- New York State Bar Association Member
- State Bar of Texas, Intellectual Property Law Section Member
- Dallas Bar Association, Intellectual Property Law Section Member
- Computer Law Association Member
- Dallas-Fort Worth Patent and Trademark Association
- Juvenile Diabetes Research Foundation, Board of Directors 1999-2005, 2010- Present, Executive Committee Member, Dallas Chapter
- STARTech Early Ventures, L.L.P., Advisory Board 1997-2004, Member
- State Bar of New York
- United States Patent and Trademark Office
- United States Lacrosse, North Texas Chapter, 2005 - 2011