Litigation Department of the Year 2018: Munck Wilson Mandala
Finalist in the Midsize Firm Category
In the mid-1990s, Bill Munck went on the hunt for the perfect place to set up a high-tech litigation firm.
After visiting Silicon Valley, Washington, D.C., and New York, where most IP firms were concentrated at the time, he ended up rejecting both the East and West coasts and staked his claim in Dallas.
A Long Island native, and former computer science and electrical engineer who’d graduated Hofstra University’s Law School in just two years, Munck was impressed with Texas’ low cost of living, high-quality public universities, and concentration of tech companies in the northern part of the state. It seemed like the right perch from which to attract clients who wanted their inventions protected, he said.
“I made the pitch to my wife that we would be better off in Dallas than in California, D.C. or New York. The idea was to build a practice around a particular type of client,” Munck said.
While plenty of smaller law firms had licensed patent attorneys and litigators to serve the technology companies, not many of them had both, he explained.
“What companies need is IP and licensing and labor and employment as well as litigation. Our client base is 70 percent high-tech,’’ Munck said. “Over the years we decided we weren’t going to be just an IP firm; we were going to be an IP litigation firm.”
And to stand out from other firms, Munck Wilson Mandala assigned two different kinds of patent attorneys to each case.
“Patent lawyer aren’t necessarily the best litigators. They just talk too much. We were going to build a patent firm by putting a patent lawyer and litigator on every case. We built our teams that way, and over the years we built a very successful litigation firm,’’ he said.
The firm’s $10.1 million patent infringement verdict last year against Nintendo in front of a federal jury in Dallas is a perfect example of how Munck’s plan is working out. The firm represented Dallas-based technology company iLife against the gaming giant, alleging it had infringed iLife’s patent for a motion-detection device that was used in Nintendo’s Wii gaming systems.
Munck had originally helped write the patent for iLife’s motion-detection technology. But when it came time for the small company client to take on Nintendo 20 years later in a federal courtroom, Munck left that job up to Mike Wilson, one of the firm’s most experienced litigators.
A key moment in the trial occurred when Nintendo general counsel Devon Pritchard took the stand and charmed the jury by testifying about how the Wii brought her whole family together and led her 94-year-old grandmother to bowl again. Her testimony, Wilson said, was meant to demonstrate that the Wii success was mostly driven by brand loyalty to iconic characters like “Mario” rather than on the technology iLife had invented.
But when it came time to cross-examine Pritchard, Munck Wilson associate Jordan Strauss got Pritchard to admit that the prior Nintendo “Cube” console was a failure, and that games such as Wii Sports uses avatars, not iconic characters. The question Strauss posed to Pritchard was, if she was playing Wii with her avatar, certainly that doesn’t make her avatar an iconic character. The question got the biggest laugh of the trial, and showed that Strauss was capable of out-charming her witness, according to Wilson.
“We just felt like if anyone was going to beat up on a corporate rep, it shouldn’t be me,” Wilson said of the decision to have a young associate cross-examine an important witness. “She deserved it. She worked hard on the case, as did everyone.’’
Wilson said his small team of attorneys, including partners Wallace Dunwoody and Shain Khoshbin, faced a much bigger team of lawyers representing Nintendo.
“We had no choice but to make this a team effort. At one point Nintendo had 20 Cooley lawyers in the courtroom with us,” Wilson said. “They were making it pretty hard on us.”
And in late 2017, Munck Wilson lawyers also helped defend the same iLife patent before the U.S. Court of Appeals for the Federal Circuit after Nintendo had unsuccessfully sought to invalidate it through inter partes review at the U.S. Patent and Trademark Office.
In addition to representing small Dallas-based tech businesses like iLife, Munck Wilson’s client list has grown to include a host of big-name clients such as Raytheon, Honeywell, Southwest Airlines and Galderma Laboratories. And to serve those clients, the firm currently employs 60 attorneys, half of whom are licensed patent attorneys.
“Our practice is probably 20 percent local and 80 percent outside of Dallas now,” Munck said. “We have clients in Europe and in the Pacific Rim.”
“Dallas is becoming a tech hub. If you asked if I thought it was going to be like this, I wouldn’t have believed it,” Munck added. “But I’m glad I was right.’’
Reprinted with permission from the Aug. 31, 2018 edition of the Texas Lawyer© 2018 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited.