12 Jan Daniel E. Venglarik
Daniel (Dan) E. Venglarik is a partner in the technology/intellectual property law group.
Dan practices in both enforcement of intellectual property rights and defense of intellectual property claims, providing licensing assistance and domestic and international litigation support, prosecuting and defending patent reexaminations and inter partes reviews, and providing opinions and expert testimony on infringement and validity. Dan also represents clients in the development of patent portfolios, including drafting patent applications on key technologies for clients and counseling on patent portfolio management for enterprise core technologies.
Prior to joining Munck Wilson Mandala, Dan was a partner at a Fort Worth-based Texas intellectual property law firm, working with Fortune 50 technology clients. Dan has practiced law in a Houston IP boutique firm and he served as a technical advisor for a large regional Texas IP firm.
- Representing international pharmaceutical company in patent litigation against two ANDA filers over topical anti-acne gel, and represented same company against generics manufacturers in patent litigation relating to topical shampoo and lotion.
- Prosecuting key patent applications on standards-essential technologies for international telecommunications equipment manufacturer in on-going patent litigation with manufacturer of popular mobile handset “smartphone” devices.
- Prosecuting inter partes reviews relating to asserted patents on thermally stable polycrystalline diamond facings for drill bit cutter inserts, on behalf of client with customers threatened by Fortune 500 competitor.
- Defending ex parte reexaminations and represented client in co-pending patent litigation asserting infringement of novel X-Y robotic retrieval system patents, obtaining favorable settlement terms on eve of trial and obtaining reexamined patent claims suitable for assertion against additional infringers.
- Representing patent owner in infringement suits relating to revolutionary use of accelerometers in devices to monitor safety of persons and cargo containers.
- Managed conduct of intellectual property due diligence in $800M+ acquisition of international competitor by payment solutions division of Fortune 500 enterprise.
- Defended vending machine manufacturer in patent infringement claims on four patents through Markman hearing, and prosecuted co-pending inter partes reexaminations on entire patent family, to obtain favorable litigation settlement terms shortly before trial while USPTO continues invalidity proceedings.
- Managing development of patent portfolios for mid-size aerospace electronics manufacturer, international semiconductor manufacturer, and automated merchandising and payment solutions divisions of diversified holding company.
- Providing updated non-infringement opinions following reexamination and concurrent litigation of patents asserted against customers of international semiconductor device manufacturer.
- Representing client in licensing negotiations and providing counseling on inter partes review regarding microprocessor patent portfolio asserted by non-practicing entity against purchasers of microprocessors.
- Represented client in defending infringement suits relating to tungsten carbide jewelry, obtaining favorable settlement terms following Markman briefing.
- Defended ex parte reexaminations of patents relating to lithium-ion cathode high capacity electric batteries being asserted in co-pending litigation.
Presentations & Published Works
Bilski’s Impact on In-House Counsel Varies by Client’s Technology,
Texas Lawyer, August 2, 2010
Patent Litigation – Using Reexamination As a Backstop in Your Defense,
Smart Business, March 2008
Patent Case Venue – How the Eastern District of Texas Fits Into Current Patent Suites
Smart Business, February 2008
Hedge Your Bets: How Patent Re-examination Works,
Smart Business Dallas, July 2007
Professional Associations & Memberships
American Bar Association
Intellectual Property Law Section
State Bar of Texas
Intellectual Property Law Section, IP Council (2005-2006)
American Intellectual Property Lawyers Association (AIPLA)
Federal Circuit Bar Association
Dallas Bar Association
Intellectual Property and Computer Law Sections
International Trademark Association (INTA)
Additional Education & Achievements
United States Army, 25th Infantry Division (Light)
Texas Army National Guard, 69th Mechanized Infantry Division