Mr. Rhoades has extensive patent litigation experience in the wireless communication and electrical/computer fields, including disputes regarding both hardware and software inventions. He has extensive experience representing the interests of clients, including the counseling of clients, management of world wide patent and trademark portfolios, management of discovery, and involvement in hearings/trials. For the past several years Mr. Rhoades has acted as lead counsel for defendants in multiple patent litigations in the Eastern District of Texas. He is directly responsible for the determination and implementation of case strategies, the selection and pursuit of claim constructions through briefing, tutorials and claim construction hearings, the preparation and evaluation of fact and expert discovery, and preparation for trial on the merits.

Mr. Rhoades has advised clients and managed their trademark and patent portfolios, both domestic and international. He also has over a decade of experience in the preparation and prosecution of electrical art patent applications and the drafting of license agreements.

Mr. Rhoades is a member of the State Bar of Texas. He is also licensed to practice before the United States Patent and Trademark Office.

Prior to attending law school, Mr. Rhoades was a system design senior engineer at Lockheed in Fort Worth, Texas.

• Enforcement of intellectual property rights for a IP Holding company in the wireless communication arena in the Northern District of Texas and before the Patent and Trademark Appeal Board
• Represented a wearable sensor manufacturer before the Patent and Trademark Appeal Board
• Enforcement of intellectual property rights for a finance company in the District of Delaware
• Enforcement of copyrights for an architect in the Northern District of Texas
• Enforcement of intellectual property rights for a IP Holding company in the computer software arena in the Eastern District of Texas and before the Patent and Trademark Appeal Board
• Defended a wireless service provider in the Western District of Texas in a patent litigation matter concerning mapping technology

• Defended a wire manufacturer in multiple patent litigations concerning the manufacturing processes and products in multiple districts throughout the United States
• Defended a retail provider in the Southern District of New York in a patent litigation concerning RFID technology.
• Defended the largest commercial homebuilder in multiple copyright infringement matters concerning home plans
• Prosecuted infringement claims for a wireless service provider in trademark litigation matters in multiple districts throughout the United States
• Prosecuted infringement claims concerning software inventions in the Eastern District of Texas
• Defended a monitor manufacturer in the Eastern District of Texas in a patent litigation matter concerning display driver technology.

Relevant Legal Experience

• Copyright Litigation and Counseling
• IP Transactions
• Patent Litigation and Counseling
• Post-grant Proceedings
• Trademark Litigation and Counseling
• Trade Secret Litigation and Counseling

Relevant Industry Experience

• Communications and Information Technology
• Health Care and Life Sciences
• Manufacturing
• Retail
• Semi Conductor
• Telecommunications

Degrees

• J.D., University of Texas School of Law, 1997

• B.S.E.E., Kansas State University, 1990

• B.S.B.A., Kansas State University, 1990

Bar

• Texas

• U.S. Patent and Trademark Office

Court

• U.S.D.C., Eastern District of Texas

• U.S.D.C., Northern District of Texas

• U.S.D.C., Western District of Texas

• U.S.D.C., Southern District of Texas

• U.S. Court of Appeals, Federal Circuit

Mr. Rhoades’ community, civic and charitable activities include being:

• Pro Bono representation of the Dallas Stars Alumni Association in entertainment and intellectual property matters
• A former board of trustees member of the Pantego Christian Academy
• Involved in the Kansas State University Alumni Association
• A board of advisors member of Joe Gordon Sports.

Mr. Warren is a member of the State Bar of Texas and its Litigation and Intellectual Property sections and the International Trademark Association (INTA). Mr. Warren is a former member of the editorial board of the Trademark Reporter of the INTA. He is also the former intellectual property counsel for American Airlines.

Mr. Warren is a lifetime fellow of the Dallas Bar Association Foundation and the Texas Bar Foundation.

Mr. Warren has been one of the lead attorneys in the following intellectual property litigations representing:

• a major medical device company in the successful defense of a patent infringement suit involving catheters used in kyphoplasty

• a major semiconductor company in a successful patent infringement suit involving processes for manufacturing integrated circuits

• a major telecommunications company in the successful defense of a patent infringement suit relating to wireless communication protocols

• a major retail company in the successful defense of a patent infringement suit relating to RFID technology

• major restaurant chain in the successful defense of a copyright claim relating to it’s architectural design

• lead trial attorney in a successful plaintiff case relating to a theft of trade secrets case
• pro bono representation of a community theater group regarding entertainment law and intellectual property matters

Awards & Accolades

• Recognized by Lawyers of Distinction for Intellectual Property, 2019-2022.
• Recognized by Best Lawyers in America for Trademark Law, 2012-2017.
• Recognized as an IP Star by Managing Intellectual Property, 2013-2016.
• Lifetime Fellow of the Dallas Bar Association Foundation and the Texas Bar Foundation.

Speaking Engagements

• Presenter, “Duty of Candor to the Court,” 15th Annual Advanced Patent Litigation 2019, State Bar of Texas (2019).
• Presenter, “Appeals from the TTAB: Federal Circuit or the Eastern District of Virginia,” 30th Annual Advanced Intellectual Property Law Course, State Bar of Texas (2017).
• Presenter, “Did That Really Just Happen? – Experiences In and Out of the Courtroom”, Texas A&M School of Law, Center for Law and Intellectual Property Speaker Series (2015).
• Presenter, Damages Update, State Bar of Texas 10th Annual Advanced Patent Litigation CLE (2014).
• Co-Course Director, State Bar of Texas 6th and 7th Annual Advanced Patent Litigation CLEs, San Antonio, Texas (2010-2011).
• Presenter, Post-Seagate and the Attorney-Client Privilege, University of Texas Law School IP Symposium (2008).
• Presenter, Reverse Engineering Integrated Circuits and the Attorney-Client Privilege and the Work Product Doctrine, Semiconductor Insights IP Symposium (2008).

Relevant Legal Experience

• Copyright Litigation and Counseling
• IP Transactions
• Intellectual Property
• Internet and New Media Litigation and Counseling
• Patent Litigation
• Post-grant Proceedings
• Strategic IP Counseling
• Trademark Litigation and Counseling
  
• Trademark Prosecution
• Trade Secret Litigation

Relevant Industry Experience

• Communications and Information Technology
• Health Care and Life Sciences
• Manufacturing
• Retail
• Semi Conductor
• Telecommunications
• Entertainment and Media

Degrees

• J.D., Tulane University Law School, cum laude, 1987

• B.S., Millsaps College, cum laude, 1983

Bar

• Texas

• U.S. Patent and Trademark Office

Court

• U.S. Court of Appeals for the Federal Circuit
• U.S.D.C., Eastern District of Texas
• U.S.D.C., Northern District of Texas
• U.S.D.C., Western District of Texas
• U.S.D.C., Southern District of Texas
• U.S.D.C., Colorado

• Author of over forty-five articles, Expert Legal Commentator for the International Risk Management Institute (2000 – Present).
• Coauthor, Chapter 30: “Intellectual Property Insurance” of the multivolume treatise, New Appleman on Insurance Law Library Edition (2017 – 2021).

• Coauthor, “Duty of Candor to the Court,” 15th Annual Advanced Patent Litigation 2019, State Bar of Texas (2019).
• Coauthor, Chapter 3: “Patents: Real-World Issues in Mixed Realities,” of the treatise Computer Games and Immersive Entertainment: The Next Frontiers in Intellectual Property Law (2nd Ed. 2018).
• Coauthor, Chapter 44: “Understanding Intellectual Property Insurance” of the national practice guide, New Appleman Insurance Law Practice Guide (2017).
• Coauthor, Chapter 10: “Appeals from the TTAB: Federal Circuit or the Eastern District of Virginia,” 30th Annual Advanced Intellectual Property Law Course, State Bar of Texas (2017).
• Coauthor, Chapter 3: “Patents: Real-World Issues in Mixed Realities,” of the treatise Computer Games and Immersive Entertainment: The Next Frontiers in Intellectual Property Law (1st Ed. 2010).

• Advance level preparation, prosecution, and docket/file management relating to United States Patents including experience with Design Patents, United States National Phase and Bi-Pass Applications, Reissues, Ex Parte Reexamination, Patent Prosecution Highway (PPH) program, drafting basic Provisional Applications, drafting formality office action responses, and drafting Appeal Briefs

• Advance level preparation, prosecution, and docket/file management relating to United States Trademarks including Certification Marks, drafting goods/services descriptions, drafting substantive office action responses, and drafting substantive Appeal Briefs

• Advanced level Patent Cooperation Treaty preparation and prosecution including experience with all electronic filing before the United States Patent and Trademark Office and World Intellectual Property Organization, and experience with the Priority Document Exchange Program

• Cease and Desist matters for foreign and domestic Trademarks and Domain Name Infringement

• Copyrights

• Domain Name registration and searching

• Due diligence Intellectual Property searching

• Experience in drafting Assignments, Licenses, and various Agreements including settlement and coexistence

• Experience in obtaining legalized, apostilled, and certified documents for use in numerous foreign countries pertaining to Patents and Trademarks

• Extensive knowledge of filing requirements, rules, and regulations for filing Patents and Trademarks in a vast number of foreign countries

• General legal research

• Litigation experience before the United States District Courts and Court of Appeals for the Federal Circuit

• Madrid Protocol

• Preparation, filing, and prosecution of Inter Partes Review before the United States Patent and Trademark Office

• Prior art searching

• Trademark clearance searching

• United States and foreign Trademark Oppositions and Cancellations including drafting substantive documents before the United States Trademark Trial and Appeal Board

• Local performer (stage, film, voice over, singing, dancing, improvisation comedy, and clowning)

• Dallas Wind Symphony

• Genesis Women’s Shelter of Dallas

• SPCA of Texas