Tammy  Terry

Admissions

• State Bar of Texas
• State Bar of California
• United States Patent and Trademark Office
• United State District Court for the Central District of California
• United State District Court for the Northern District of California
• United State District Court for the Southern District of California
• United States District Court for the District of Colorado
• United State District Court for the Eastern District of Michigan
• United State District Court for the Eastern District of Texas
• United State District Court for the Southern District of Texas
• United State District Court for the Western District of Texas
• United State District Court for the Northern District of Texas
• United States Court of Appeals for the Federal Circuit
• United States Court of Appeals for the Fifth Circuit
• United States Court of Appeals for the Ninth Circuit

PROFESSIONAL HONORS

• “Top Lawyer,” H Texas magazine (2016-2020)
• “Top 50 Women in PTAB Trials List,” PTAB Bar Association (2019)
• “Texas Rising Star,” Texas Super Lawyers (2008, 2009)

PROFESSIONAL ACTIVITIES AND MEMBERSHIPS

• International Trademark Association (INTA)
• Intellectual Property Owners Association (IPO)
• Association Internationale pour la Protection de la Propriété Intellectuelle (AIPPI)
• American Intellectual Property Law Association (AIPLA)
• American Bar Association – Intellectual Property Litigation Section
• Serves as judge for various law student mock trial competitions at University of Houston Law Center (2012-2016)

NOTABLE CASES

• EIS, Inc. v. IntiHealth GmbH, et al, Civ. No. 1:19-cv-01227-GBW (D. Del., Sept. 15, 2023): Represented defendants IntiHealth GmbH, Novoluto GmbH, WOW Tech, USA, Ltd., and WOW Tech Canada, Ltd. in federal district court litigation in the United States District Court for the District of Delaware. Case included claims against clients alleging Lanham Act unfair competition, common law unfair competition, tortious interference, deceptive trade practices, antitrust, inequitable conduct, and declaratory judgment of non-infringement related to five patents owned by client Novoluto. Lead trial counsel, Ms. Terry, led the trial team through a jury trial resulting in a $12.8 million jury verdict in favor of clients that dismissed legal claims against clients with findings of willful patent infringement against original plaintiff and counter-defendants.
• EIS GmbH v. Novoluto GmbH, Case No. 2021-2215 (Fed. Cir., March 13, 2023):  Represented patent owner Novoluto GmbH in a consolidated appeal in the United States Court of Appeals for the Federal Circuit where petitioner appealed the final written decisions from the Patent Trial and Appeals Board of the United States Patent & Trademark Office in three separate inter partes review cases.  One business day after oral arguments, the Federal Circuit issued its decision affirming the PTAB decisions in all three cases in favor of our client.
• EIS GmbH v. Novoluto GmbH, IPR2020-00007 (P.T.A.B., Sep. 23, 2021):  Represented patent owner Novoluto GmbH in an inter partes review EIS GmbH requested challenging the patentability of Novoluto’s U.S. Patent No. 9,849,061. After initially winning at the institution phase, then having the case reopened on rehearing, we secured another victory for Novoluto after trial on the merits led to a final written decision from the Patent Trial and Appeals Board of the United States Patent & Trademark Office affirming the patentability of the challenged patent.
• EIS GmbH v. Novoluto GmbH, Case No. IPR2019-01444 (P.T.A.B., Aug. 5, 2021):  Represented patent owner Novoluto GmbH in an inter partes review EIS GmbH requested challenging the patentability of Novoluto’s U.S. Patent No. 9,763,851. After initially winning at the institution phase, then having the case reopened on rehearing, we secured another victory for Novoluto after trial on the merits led to a final written decision from the Patent Trial and Appeals Board of the United States Patent & Trademark Office affirming the patentability of the challenged patent.
• EIS, GmbH v. Novoluto GmbH, Case No. IPR2019-01302 (P.T.A.B., June 14, 2021):  Represented patent owner Novoluto GmbH in an inter partes review EIS GmbH requested challenging the patentability of Novoluto’s U.S. Patent No. 9,937,097. After initially winning at the institution phase, then having the case reopened on rehearing, we secured another victory for Novoluto after trial on the merits led to a final written decision from the Patent Trial and Appeals Board of the United States Patent & Trademark Office affirming the patentability of the challenged patent.
• Deep Fix, LLC v. Marine Well Containment Company LLC, (SDTX 2018-2020): Represented a well containment company as a defendant in a patent infringement lawsuit and successfully obtained a finding of inequitable conduct.
• Phoenix Licensing, et al. v. Security Group, Inc., et al,. (EDTX 2016-2017): Represented Defendants in patent infringement suit filed by non-practicing entities and successfully resolved the matter for the clients without the need for filing an answer.
• Magna Electronics v. Valeo et al., (2012-2015): Represented Defendants in multiple patent litigation suits in district court and Petitioners in numerous rounds of IPRs in front of the Patent Trial and Appeal Board where clients were successful in staying district court proceedings and invalidating multiple patent claims through IPR proceedings.
• Hewlett Custom Home Design, Inc. v. Frontier Custom Builders, Inc. et al, (SDTX 2010-2013): Represented copyright owner Hewlett Custom Home Design in an architectural copyright infringement jury trial. The jury returned a verdict in our client’s favor, which was upheld on appeal.
• In the Matter of Certain Products Having Laminated Packaging, Laminated Packaging, and Components Thereof, Inv. No. 337-TA-874 (Int’l Trade Comm’n 2013).  Mrs. Terry was lead counsel on behalf of Respondents Cognac Ferrand USA, Inc. and WJ Deutsch & Sons Ltd. in a Section 337 patent infringement investigation in the International Trade Commission.  This was the first investigation in which the Commission required expedited proceedings to be held to determine whether complainant had satisfied the economic prong of the domestic industry hearing.  The Commission issued a finding of no violation in respondents’ favor.  The concurrently pending case in the United States District Court for the Eastern District of Texas, Lamina Packaging Innovations, LLC v. Cognac Ferrand USA, Inc. and WJ Deutsch & Sons, Ltd., Case No. 2:13-cv-00174, subsequently was resolved in an agreement that requires confidentiality as to its terms.
• Hewlett Custom Home Design, Inc. v. Frontier Custom Builders, Inc., et al. (2010-2013).  Represented copyright owner Hewlett Custom Home Design in an architectural copyright infringement jury trial against Frontier Custom Builders and Ronald W. Bopp.  The jury returned a verdict in our client’s favor.
• In the Matter of Certain Kinesiotherapy Devices and Components Thereof, Inv. No. 337-TA-823 (Int’l Trade Comm’n 2012):  Represented Complainants Standard Innovation (US) Corp. and Standard Innovation Corporation in a Section 337 patent infringement investigation in the International Trade Commission.  Mrs. Terry co-first chaired the final hearing (trial) in August 2012.  In June 2013, the Commission issued a final determination in Standard Innovation’s favor, finding that respondents infringed Standard Innovation’s valid patents.  The Commission issued a general exclusion order and cease and desist orders prohibiting infringing articles from being imported into the United States.
• Aspen Technology, Inc. v. M3 Technology  (2010-2012).  Represented M3 Technology in three week trial in May 2012, involving copyright infringement, misappropriation of trade secrets, and tortious interference claims, the resolution of which is currently pending appeal.
• In the Matter of Certain Elastomeric Material Devices, Inv. No. 337-TA-732 (Int’l Trade Comm’n 2010).  Represented Respondents Tenga Co. Ltd. and One Up Innovations, Inc. in a Section 337 patent infringement investigation in the International Trade Commission.  After summary determination briefing, the matter was resolved in a settlement agreement that requires confidentiality as to its terms.

The Law Offices of Tom Fulkerson LLP

• Gyrodata Inc. v. Gyro Technologies, Inc. (d/b/a Vaughn Energy Services), et al. (2009-2010).  Represented Gyrodata Inc. in a patent infringement claim and request for preliminary injunctive relief concerning the use of a drop memory gyroscope. After a preliminary injunction hearing and initial decision, the matter was resolved in a settlement agreement that requires confidentiality as to its terms.
• Cheetah Gas Co., Ltd. v. Chesapeake Louisiana, L.P., et al. (2008-2009). Represented Cheetah in the prosecution of a claim for breach of agreements to purchase oil and gas leases in the Haynesville Shale. Within eight months of filing suit, the case was resolved in an agreement that requires confidentiality as to its terms.
• Total Separation Solutions, LLC v. Frick, et al. (2007-2009). Represented Total Separation Solutions, LLC in a case involving trade secret misappropriation, breach of contract, fraud and breach of fiduciary duty claims.  We obtained a temporary injunction in March 2007 and tried the case in June 2009. The jury returned a verdict in favor of our client. The case settled after trial but before entry of judgment.
• Scientific Drilling International, Inc., et al. v. Gyrodata Inc. (2006-2009). Represented Gyrodata, a leader in gyroscopic wellbore surveying, as the defendant and counter-plaintiff in complex, multimillion-dollar patent infringement litigation.  After summary judgment briefing, the case was resolved in an agreement that requires confidentiality as to its terms.
• U.S. Securities and Exchange Commission’s Investigation of El Paso Corporation (2004-2008).  Successfully represented Huddleston & Co., Inc., the auditor of the reserve estimates of the El Paso Corporation, in the SEC’s investigation of El Paso’s 41% reserve write-down in February 2004.
• Sullivan v. Scalable Software, et al. (2004-2005).  Successfully represented NEON Systems, Inc., a software company, as a defendant in an employment discrimination suit.  After obtaining summary judgment on behalf of the client, the matter was resolved in an agreement that requires confidentiality as to its terms.

Clements O’Neill LLP

• Construction Bank of China, et al. v. Wong, et al. (2004-2005). Represented Mr. Wong in a $38 million claim in which the plaintiffs claimed that Mr. Wong had misappropriated trust funds and engaged in self-dealing.  The matter was resolved for a contribution by Mr. Wong in a settlement agreement that requires confidentiality as to its terms.
• Robinson v. Destiny’s Child, et al. (2004). Represented Destiny’s Child and obtained complete dismissal within six months of the filing of $200 million copyright claim relating to the hit song “Survivor.”