JOSE C. VILLARREAL

Partner
Litigation

EXPERIENCE:

Jose Villarreal is a partner in the patent litigation practice at Wilson Sonsini Goodrich & Rosati. He specializes in litigation and dispute resolution, strategic IP counseling and licensing, M&A due diligence, and intellectual property asset assessment. He is also experienced in all phases of litigation from pre-trial through trial in federal courts and the hearings before the International Trade Commission (ITC). Jose has also appeared before the Court of Appeals for the Federal Circuit, involving interpretations of first impression under the America Invents Act. In addition, he has experience leading patent disputes involving coordinated strategies in district court and the Patent Trial and Appeal Board.

Jose has broad experience negotiating licensing agreements and advising on intellectual property matters related to private company investments, public offerings, mergers and acquisitions.

Jose has experience with varied technologies including diagnostic devices, IEEE 802.11, CDMA, Ethernet, ESD protection circuits, semiconductor processes and packaging, DVD/CD technologies, and flash memory. In addition, he is experienced with patents involving software technologies for customer relationship management, content delivery, and business methods, among others.

Jose is involved in continuing legal education and has served on the Conference Planning Committee of the University of Texas School of Law Advanced Patent Law Institute since 2014.

Prior to his legal career, Jose worked at Bell Communications Research (Bellcore) in the area of network infrastructure and telecommunications protocols.

Jose is fluent in Spanish.

SELECT CLIENTS:
  • Bungie, Inc.
  • Integrated Silicon Solution, Inc.
  • Omnivision Technologies, Inc.
  • Salesforce.com
  • TearLab Corporation
  • WideOrbit, Inc.
REPRESENTATIVE PATENT CASES:
  • Virtual Agility v. Salesforce.com, et al. (E.D. TX - Marshall). Jose was lead counsel representing Salesforce.com, Dell, Dr. Pepper Snapple Group, NBCUniversal, LivingSocial, FedEx, BMC Software, Bank of America, and Merrill Lynch in this patent litigation involving parallel proceedings at the Patent Trials and Appeal Board at the USPTO, the Eastern District of Texas, and the Court of Appeals for the Federal Circuit. Jose was first chair in defendants' interlocutory appeal to the Court of Appeals of the Federal Circuit that reversed the District Court's denial of a stay pending a petition for Covered Business Method patent review by the PTAB. Subsequent to the stay, the PTAB held every claim of Plaintiff's patent unpatentable as an abstract idea and also anticipated by prior art. Subsequently the claims against all defendants were dismissed with prejudice.
  • Richard Williamson v. Citrix Online et al. (C.D. Cal. - and N.D. Cal.). Served as lead counsel for Salesforce.com and Dimdim in litigation related to educational software. Successfully represented the client at the district court in claim construction involving functional claims that led to the Federal Circuit’s precedential decision on means plus function claims.
  • Verify Smart v. Salesforce.com (E.D. TX-Marshall). Successfully represented Salesforce.com in obtaining a voluntary dismissal with prejudice of all claims by plaintiff at no cost.
  • Ormco Corp. v. OraMetrix, Inc. (C.D. Cal. - Los Angeles). Represented OraMetrix in patent suit relating to international orthodontics systems and computer-aided design. After counterclaiming with multiple patent claims and asserting unexpected affirmative defenses, the case settled on favorable terms for OraMetrix.
EDUCATION:
  • J.D., Georgetown University Law Center
    Cum Laude; Georgetown Immigration Law Journal; CALI Excellence Award for Evidence, Communications Law
  • M.Eng., Electrical Engineering, Cornell University
  • B.S., Electrical Engineering, University of Florida
    With High Honors
ASSOCIATIONS AND MEMBERSHIPS:
  • American Intellectual Property Law Association
  • Austin Intellectual Property Law Association
  • American Bar Association Section of Litigation
  • International Trade Commission Trial Lawyers Association
  • The Honorable Lee Yeakel Intellectual Property American Inn of Court
HONORS:
  • Recognized in the 2016-2018 editions of Texas Super Lawyers
SELECT PUBLICATIONS:
  • Co-author, "Defending Against Willful Infringement PostHalo: The Expanding and Contracting Scope of Waiver When Asserting an Opinion of Counsel Defense," American Intellectual Property Law Association (AIPLA) Annual Meeting, October 2018
  • "The Patent Infringement Letter: Ignore or Respond?" Healthcare Innovations Venture Investment Forum, Legal Issues for Life Science Companies, October 2016
  • Co-author, "Courts Shed Light on the Scope of Federal Court Review of Patent Office Decisions Initiating AIA Patent Challenge," The Intellectual Property Strategist, September 2014
  • Co-author, "The Uncertainty of Patent Pleadings after Iqbal," The Intellectual Property Strategist, March 2010
  • "Working with Experts in Patent Cases," The Advocate, Litigation Section of the State Bar of Texas, Winter 2008
SELECT SPEAKING ENGAGEMENTS:
  • Co-speaker, "Means-Plus-Function Claims after Williamson v. Citrix," University of Texas School of Law Advanced Patent Law Institute, November 3-4, 2016
  • "Recent Trends in Patent Damages," Austin Intellectual Property Law Association CLE, May 2015
  • Panelist, IPO IP Chat Channel Webinar, "Hope for Software Patents? DDR at the Federal Circuit, plus District Court and PTAB," January 2015
  • "Patent Prosecution from a Litigator's Perspective," AIPLA 2014 Practical Training for New Lawyers, August 2014
  • Interviewed for Practical Law Journal GC Agenda regarding the Limelight Networks, Inc.v. Akamai Technologies, Inc. Supreme Court decision, July/August 2014 issue
  • Speaker, Asia Pacific Property Association (APIPA) and WSGR Patent Litigation Symposium on new Federal Circuit case law and the America Invents Act, September 16, 2011, Zhubei City, Taiwan
  • "Changing the Patent Legislation Base: How New Reforms Could Affect Your Business," American Chemical Society National Meeting, San Francisco, California, September 2006
  • FSA IP Roundtable, 2003
ADMISSIONS:
  • State Bar of Texas
  • U.S. District Court for the Eastern District of Michigan
  • U.S. District Court for the Eastern District of Texas
  • U.S. District Court for the Northern District of Texas
  • U.S. District Court for the Southern District of Texas
  • U.S. District Court for the Western District of Texas
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Patent and Trademark Office

Contact Information

900 South Capital of Texas Highway
Las Cimas IV
Fifth Floor
Austin, TX 78746
Phone | 512-338-5424

Email | Jose Villarrealjvillarreal@wsgr.com


Areas of Expertise

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