Joshua Wyde

Of Counsel

Joshua Wyde

Of Counsel

Joshua Wyde is a patent attorney whose practice emphasizes patent litigation, PTAB post-grant proceedings, portfolio analysis, patent legal opinions, and IP contract provisions. 

An electrical engineer and an entrepreneur, his software and hardware experience has helped inform his work for both plaintiffs and defendants from pre-complaint investigation to trial.  He has worked on patent, copyright and trademark cases.

He formerly practiced with the intellectual property team at Winston & Strawn LLP (formerly Howrey LLP) and ran his own firm for many years.  Prior to his legal career, he worked as an engineer, including at Compaq Computer Corp.

magna cum laude graduate of both the University of Houston Law Center and the University of Houston, Cullen College of Engineering, he also has an M.B.A. from University of Houston, C.T. Bauer College of Business. 

Mr. Wyde has actively participated in the American Invents Act (“AIA”) patent post-grant proceedings (“PGPs”) before the Patent Trial and Appeal Board (“PTAB”) and been lead counsel in many inter partes reviews and covered business method reviews for both petitioners and patent owners. He has evaluated hundreds of portfolios to determine overall value, key value drivers, and potential issues if the patents were litigated for companies considering purchasing patents.

He has provided many informal and formal opinions regarding infringement, invalidity, enforceability, and unpatentability to companies who have been approached about a patent to objectively assess the actual likelihood for infringement, provide potential “design arounds,” and to mitigate later assertions of willfulness. And he often reviews and drafts intellectual property provisions of contracts, agreements, and licenses.

Joshua Wyde is a patent attorney whose practice emphasizes patent litigation, PTAB post-grant proceedings, portfolio analysis, patent legal opinions, and IP contract provisions. 

An electrical engineer and an entrepreneur, his software and hardware experience has helped inform his work for both plaintiffs and defendants from pre-complaint investigation to trial.  He has worked on patent, copyright and trademark cases.

He formerly practiced with the intellectual property team at Winston & Strawn LLP (formerly Howrey LLP) and ran his own firm for many years.  Prior to his legal career, he worked as an engineer, including at Compaq Computer Corp.

magna cum laude graduate of both the University of Houston Law Center and the University of Houston, Cullen College of Engineering, he also has an M.B.A. from University of Houston, C.T. Bauer College of Business. 

Mr. Wyde has actively participated in the American Invents Act (“AIA”) patent post-grant proceedings (“PGPs”) before the Patent Trial and Appeal Board (“PTAB”) and been lead counsel in many inter partes reviews and covered business method reviews for both petitioners and patent owners. He has evaluated hundreds of portfolios to determine overall value, key value drivers, and potential issues if the patents were litigated for companies considering purchasing patents.

He has provided many informal and formal opinions regarding infringement, invalidity, enforceability, and unpatentability to companies who have been approached about a patent to objectively assess the actual likelihood for infringement, provide potential “design arounds,” and to mitigate later assertions of willfulness. And he often reviews and drafts intellectual property provisions of contracts, agreements, and licenses.

EDUCATION

University of Houston Law Center, J.D., magna cum laude

  • Law Review, Order of the Coif, Tutor
  • Awarded Lex Award for highest grade in Legal Research & Writing and Contracts

University of Houston, C.T. Bauer College of Business, M.B.A.

  • Certified Financial Planning Specialty, Certificate of Leadership awarded from Department of Accountancy & Taxation

University of Houston, Cullen College of Engineering, B.S.E.E, magna cum laude

  • Honors College, Tau Beta Pi, Eta Kappa Nu
  • Awarded Outstanding Senior Award by Texas Society of Professional Engineers

REPRESENTATIVE CASES

Alaska Fuel Distributors Inc. v. Frac Shack Inc., IPR2019-00995 (PTAB decision Oct. 15, 2020) Against heavy odds (only 2 in 10 are successful), successfully amended patent claims in the IPR.

Frac Shack Inc. v. Atlas Oil Co., No. 4:18-cv-2566 (S.D. Tex filed July 24, 2018); Frac Shack Inc. V. Atlas Oil Co., No. 1:16-cv-02275 (D. Colo. filed Sept. 9, 2016); Fuel Automation Station v. Frac Shack Inc., No. IPR2017-01349 (PTAB denied Dec. 05, 2017) After years of litigation regarding an innovative frac fueling system and method, including defeating defendants’ IPR petition, Mr. Wyde forced a favorable settlement agreement soon before trial in the Colorado case and the weekend before the Monday where defendants were to be sanctioned in Texas. Mr. Wyde handled all aspects of these cases with one other lawyer.   

In-Depth Test LLC in IPR2015–00421, CBM2015–00060, IPR2015–01627, IPR2015–01994, IPR2015–01998; IPR2016–01833; IPR2017–02009 (denied Mar. 9, 2018); and IPR2017–02094 (pending) Mr. Wyde defended the same patent against eight sequential attacks in the USPTO against large multinational law firms.  He defeated all but one proceeding via convincing preliminary responses, whereby the Board denied institution and settled the remaining proceeding after deposing petitioner’s expert.

Mishan & Sons, Inc v. Avenue Innovations, Inc., No. IPR2017-00140 (PTAB denied May 8, 2017)Mr. Wyde represented patent owner against IPR petition regarding a mechanical device known as the “HandyBar” for helping persons get in and out of a vehicle seat. He removed his client from the proceeding when the Board denied institution of the IPR trial on the merits. 

Hailo Tech., LLC v. Mobisoft Infotech, LLC, No. 4:17-cv-00076 (S.D. Tex. dismissed Mar. 3, 2017) Mr. Wyde defended a small company against allegations of patent infringement, by cost-effectively implementing a strategy of simultaneously signaling small reward and great risk to continue to pursue his client. Plaintiff “blinked,” dismissing his client two days before defendant’s answer was due. 

Fathers & Daughters Nevada, LLC v. Does 1–13, No. 4:16-cv-1968 (S.D. Tex. filed July 05, 2016) Mr. Wyde filed this copyright litigation for a movie producer, Voltage Pictures, against anonymous persons who had used BitTorrent to illegally copy his clients’ movies.  He issued subpoenas to obtain the names of account holders at the time of infringement and negotiated settlements from many represented defendants while preparing to litigate if negotiations failed. 

Reflectix, Inc. v. Promethean Insulation Tech. LLC, Nos. IPR2015-00039,-42,-44,-45,-47 (PTAB 2015) By closely following the PTAB case law, Mr. Wyde recognized that petitioner failed to name a real party-in-interest in these five IPRs, and the panel agreed, declining to institute trial against any of his client’s patents. 

Fujitsu Ltd. v. Belkin Int’l, No. 10–cv–03972 (N.D. Cal. trial Dec. 2012) This case was listed on San Francisco and Los Angeles Daily Journal’s list of Top California Defense Verdicts of 2012. Fujitsu’s patent was widely considered “bullet proof” because the U.S. Patent Office reexamined the patent’s validity two times after issuance, and the judge had ruled on summary judgment that our client had infringed the patent. After a three-week trial, the jury deliberated for less than five hours, concluding that there was no willful infringement, no damages, and that Fujitsu’s asserted claims were invalid. Mr. Wyde’s role was to oversee the winning invalidity aspect of the case. 

ADMISSIONS

  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Southern District of Texas
  • U.S. District Court of the Eastern District of Texas
  • U.S. District Court of the Western District of Texas
  • U.S. District Court of Colorado
  • Patent Bar – USPTO
  • State Bar of Texas

BOOK and PATENTS

  • Patent Office Post Grant Proceedings (4th ed.), ISBN 978-1-7321136-4-0 (285 pgs.) 12/2018
  • U.S. Patent No. 8,051,303 re Secure Read and Write Access to Configuration Registers  11/2011
  • U.S. Patent No. 6,138,222 titled Accessing High Capacity Storage Devices  10/2000

EDUCATION

University of Houston Law Center, J.D., magna cum laude

  • Law Review, Order of the Coif, Tutor
  • Awarded Lex Award for highest grade in Legal Research & Writing and Contracts

University of Houston, C.T. Bauer College of Business, M.B.A.

  • Certified Financial Planning Specialty, Certificate of Leadership awarded from Department of Accountancy & Taxation

University of Houston, Cullen College of Engineering, B.S.E.E, magna cum laude

  • Honors College, Tau Beta Pi, Eta Kappa Nu
  • Awarded Outstanding Senior Award by Texas Society of Professional Engineers
REPRESENTATIVE CASES

Alaska Fuel Distributors Inc. v. Frac Shack Inc., IPR2019-00995 (PTAB decision Oct. 15, 2020) Against heavy odds (only 2 in 10 are successful), successfully amended patent claims in the IPR.

Frac Shack Inc. v. Atlas Oil Co., No. 4:18-cv-2566 (S.D. Tex filed July 24, 2018); Frac Shack Inc. V. Atlas Oil Co., No. 1:16-cv-02275 (D. Colo. filed Sept. 9, 2016); Fuel Automation Station v. Frac Shack Inc., No. IPR2017-01349 (PTAB denied Dec. 05, 2017) After years of litigation regarding an innovative frac fueling system and method, including defeating defendants’ IPR petition, Mr. Wyde forced a favorable settlement agreement soon before trial in the Colorado case and the weekend before the Monday where defendants were to be sanctioned in Texas. Mr. Wyde handled all aspects of these cases with one other lawyer.   

In-Depth Test LLC in IPR2015–00421, CBM2015–00060, IPR2015–01627, IPR2015–01994, IPR2015–01998; IPR2016–01833; IPR2017–02009 (denied Mar. 9, 2018); and IPR2017–02094 (pending) Mr. Wyde defended the same patent against eight sequential attacks in the USPTO against large multinational law firms.  He defeated all but one proceeding via convincing preliminary responses, whereby the Board denied institution and settled the remaining proceeding after deposing petitioner’s expert.

Mishan & Sons, Inc v. Avenue Innovations, Inc., No. IPR2017-00140 (PTAB denied May 8, 2017)Mr. Wyde represented patent owner against IPR petition regarding a mechanical device known as the “HandyBar” for helping persons get in and out of a vehicle seat. He removed his client from the proceeding when the Board denied institution of the IPR trial on the merits. 

Hailo Tech., LLC v. Mobisoft Infotech, LLC, No. 4:17-cv-00076 (S.D. Tex. dismissed Mar. 3, 2017) Mr. Wyde defended a small company against allegations of patent infringement, by cost-effectively implementing a strategy of simultaneously signaling small reward and great risk to continue to pursue his client. Plaintiff “blinked,” dismissing his client two days before defendant’s answer was due. 

Fathers & Daughters Nevada, LLC v. Does 1–13, No. 4:16-cv-1968 (S.D. Tex. filed July 05, 2016) Mr. Wyde filed this copyright litigation for a movie producer, Voltage Pictures, against anonymous persons who had used BitTorrent to illegally copy his clients’ movies.  He issued subpoenas to obtain the names of account holders at the time of infringement and negotiated settlements from many represented defendants while preparing to litigate if negotiations failed. 

Reflectix, Inc. v. Promethean Insulation Tech. LLC, Nos. IPR2015-00039,-42,-44,-45,-47 (PTAB 2015) By closely following the PTAB case law, Mr. Wyde recognized that petitioner failed to name a real party-in-interest in these five IPRs, and the panel agreed, declining to institute trial against any of his client’s patents. 

Fujitsu Ltd. v. Belkin Int’l, No. 10–cv–03972 (N.D. Cal. trial Dec. 2012) This case was listed on San Francisco and Los Angeles Daily Journal’s list of Top California Defense Verdicts of 2012. Fujitsu’s patent was widely considered “bullet proof” because the U.S. Patent Office reexamined the patent’s validity two times after issuance, and the judge had ruled on summary judgment that our client had infringed the patent. After a three-week trial, the jury deliberated for less than five hours, concluding that there was no willful infringement, no damages, and that Fujitsu’s asserted claims were invalid. Mr. Wyde’s role was to oversee the winning invalidity aspect of the case. 

ADMISSIONS
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Southern District of Texas
  • U.S. District Court of the Eastern District of Texas
  • U.S. District Court of the Western District of Texas
  • U.S. District Court of Colorado
  • Patent Bar – USPTO
  • State Bar of Texas
BOOK and PATENTS
  • Patent Office Post Grant Proceedings (4th ed.), ISBN 978-1-7321136-4-0 (285 pgs.) 12/2018
  • U.S. Patent No. 8,051,303 re Secure Read and Write Access to Configuration Registers  11/2011
  • U.S. Patent No. 6,138,222 titled Accessing High Capacity Storage Devices  10/2000

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(713) 655-1101

© 2021 All rights reserved.

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