11 Jan William A. Munck
William A. Munck
Practice Areas
- Copyrights
- IP Audits and Legal Opinions
- IP Due Diligence
- IP Portfolio Management and Counseling
- Intellectual Property Litigation
- Inter Partes Reviews
- Media and First Amendment Litigation
- Mergers and Acquisitions
- Noncompetition and Trade Secrets
- Patents
- Securities and Corporate Finance
- Sports Law
- Technology Transactions
- Trade Secrets
- Trademarks
- Venture Capital and Private Equity
Attorney Bio
William A. Munck is the managing partner of Munck Wilson Mandala. He is a member of the executive committee and chairs the firm’s technology/intellectual property law group. Mr. Munck has more than 27 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 is known as an attorney who will never give up the fight for his clients. In 2010, he was named as one of the top defenders in the North Texas region by the Dallas Business Journal and he has been the leader of one of the strongest intellectual property legal teams in North Texas for more than 20 years, with 40 registered patent attorneys. D CEO magazine refers to Mr. Munck’s law firm as a “Dallas intellectual property law powerhouse.”
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 he managed a design team responsible for designing and developing an industrial laboratory control system.
Mr. Munck is highly ranked by Chambers and Partners USA in intellectual property law. Clients interviewed by Chambers refer to him as “the go-to guy for litigation, prep and prosecution,” adding: “You can get hold of him 24/7, particularly in a crisis,” and: “He understands the business use of the patent.”
Mr. Munck has been selected by his peers annually as a Texas Super Lawyer and a Best Lawyer in America in intellectual property. Recently, Mr. Munck was added to the list of Distinguished Alumni by his law school, the Maurice A. Deane School of Law at Hofstra University.
In the community, Mr. Munck is involved with Hunger Busters, a non-profit organization focused on providing meals for food-challenged students in the Dallas ISD. He serves on the executive committee of the organization and he has also served on the board of the Juvenile Diabetes Research Foundation and on the executive committee for the Dallas chapter. Mr. Munck is actively involved in local and national bar associations and he is a Fellow of the American Bar Foundation, the Texas Bar Foundation and Life Fellow of the Dallas Bar Foundation.
Representative Experience
- 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.
Presentations & Published Works
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
Professional Associations & Memberships
American Bar Association
New York State Bar Association
State Bar of Texas
Intellectual Property Law Section
Dallas Bar Association
Intellectual Property Law Section
U.S. Patent and Trademark Office
Dallas-Fort Worth Patent and Trademark Association
Computer Law Association
Juvenile Diabetes Research Foundation
Executive Committee Member, Dallas Chapter, 2010-present
Board of Directors, 1999-2005
STARTech Early Ventures, L.L.P.
Advisory Board, 1997-2004
U.S. Lacrosse, North Texas Chapter
2005 – 2011