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William A. Munck 600 Banner Place Tower 12770 Coit Road Dallas, Texas 75251
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Mr. Munck is chairman of the Intellectual Property section at Munck Butrus Carter. Mr. Munck concentrates his practice on domestic and foreign intellectual property procurement, exploitation, enforcement and counseling.
Mr. Munck's IP practice focuses primarily in the information technology industry, including hardware, firmware, software and communications. Recently, he has worked in medical devices and the mechanical arts, as well. Dedicated to counseling clients concerning their development of market-focused offensive and defensive intellectual property portfolios, Mr. Munck emphasizes long-range corporate strategies for private financing, public offerings, mergers, acquisitions and establishing market leadership.
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 defense of patent infringement claim, prepared and prosecuted reexamination request with the United States Patent and Trademark Office, secured stay pending final outcome of reexamination proceeding, and developed and asserted patent infringement counterclaim
- Aerospace manufacturer to develop and assert patent infringement claim against competitor
- Wireless communications 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
- Holding company in due diligence investigation of multiple acquisition targets, developed report concerning the same including assessing offensive and defensive strength of intellectual property portfolios and strategies for enhancing the same if applicable
- Medical device company in defense of declaratory judgment action to declare patents not infringed or invalid; prevailed on motion to dismiss
- Shareholder
- Chairman, Intellectual Property (IP) Section
- Domestic and Foreign Intellectual Property Procurement
- Exploitation
- Enforcement and Counseling
- 20% of Practice Devoted to Litigation
- Texas, 1992
- New York, 1994
- U.S. District Court Northern District of Texas, 1994
- U.S. Patent and Trademark Office, 1994
- U.S. District Court Eastern District of New York, 1994
- U.S. District Court Southern District of New York, 1994
- U.S. District Court District of Colorado, 2000
- Hofstra University School of Law, Hempstead, New York,
1992
J.D. Honors: With Highest Honors and List Distinction
Law Journal:
Hofstra Labor Law Journal, Member, 1991 - 1992
- Hofstra University, Hempstead, New York,
1989
M.S. Computer Science Honors: With Honors
- Hofstra University, Hempstead, New York,
1987
B.S. Computer Science Major: Electrical Engineering Major: Mathematics
- Safeguarding Your Assets: How You Can Protect Your Intellectual Property, Smart Business Dallas, April, 2007
- American Bar Association
- Member
- New York State Bar Association
- Member
- State Bar of Texas, Intellectual Property Law Section
- Member
- Dallas Bar Association, Intellectual Property Law Section
- Member
- Computer Law Association
- Member
- Dallas-Fort Worth Patent and Trademark Association
- Juvenile Diabetes Research Foundation, Board of Directors,
1999
- Present
- Member
- STARTech Early Ventures, L.L.P., Advisory Board,
1997
- Present
- Member
- State Bar of New York
- United States Patent and Trademark Office
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Munck Butrus Carter, P.C.,
600 Banner Place Tower
12770 Coit Road
Dallas, Texas 75251
Marshall Office
110 South Bolivar, Suite 204
Marshall, Texas 75670
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