Overview
Brian W. Oaks focuses his practice on intellectual property law, with a particular emphasis on patent post-grant trials, patent litigation and patent portfolio development and management.
Brian has extensive experience in front of the Patent Trial and Appeal Board (PTAB), where he has led around 200 post-grant trials, including inter partes reviews (IPRs) and post-grant reviews (PGRs).
In federal courts in Texas and across the country, Brian litigates patent disputes relating to a range of technologies, from internet technologies to complex software and telecommunications applications. He represents both companies seeking to enforce their intellectual property rights and those accused of infringement.
Brian manages the development of strategic patent portfolios in a broad range of technologies such as computing components, software, wireless and telecommunication networks, optical networking components, electric vehicles, medical and other mechanical devices and business methods.
Brian helps clients identify, protect and leverage clients’ intellectual property assets and manage offensive and defensive assertions of intellectual property rights. Brian’s practice also includes prepares opinions of counsel for his clients in response to such assertions.
During law school, Brian was an articles editor for the Virginia Journal of Law and Technology and was on the editorial board for the Virginia Tax Review.
Results
- Successfully challenged dozens of patents in the PTAB asserted in federal court and threatened against a prominent oil and gas services industry company*
- Successfully represented a leading computer processor manufacturer in the PTAB, Western District of Texas and Court of Appeals for the Federal Circuit*
- Successfully challenged numerous patents in the PTAB asserted in federal court against multiple electric power generation companies*
- Successfully challenged numerous patents in the PTAB asserted in federal court against a prominent travel services company*
- Successfully challenged over a dozen patents in the PTAB asserted in federal court against a prominent semiconductor device company and defended the company’s patents asserted in a counter-suit*
- Successfully challenged numerous patents in the PTAB asserted in federal court against a leading wireless services provider*
- Successfully challenged numerous patents in the PTAB asserted in federal court against a prominent wireless networking device manufacturer*
- Successfully defended a challenge of a leading wireless chip manufacturer’s patents in the PTAB and Federal Circuit*
- Successfully represented a captioned telephone service company against a competitor in the Western District of Wisconsin and the PTAB*
- Obtained hundreds of granted patents for a leading personal computer manufacturer*
- Obtained hundreds of granted patents for a leading optical networking and telecommunications company*
*Matter handled prior to joining McDermott.
Recognitions
- Patextia, PTAB Intelligence Report, Top 1-2% PTAB Attorney, 2023
Community
Credentials
Education
University of Virginia School of Law, JD, 1998
The University of Texas, BS, Mechanical Engineering, 1995
Admissions
Texas
Courts/Agencies
US Patent and Trademark Office
US Court of Appeals for the Federal Circuit
US District Court for the Western District of Texas
US District Court for the Eastern District of Texas
