top of logo March 12, 2010
Munck Carter - Trials. Transactions. Technology.
bottom of logo Contact UsResource Links
HomeFirm OverviewPractice AreasCareersAttorney ProfilesE-NewsletterNews and Resources
Attorney Profile

William A. Munck 
600 Banner Place Tower
12770 Coit Road
Dallas, Texas 75251

Phone:
(972) 628-3630

Fax:
972-628-3616

E-mail:
Email Me

Web site:
http://www.munckcarter.com



PositionAreas of PracticeEducation
HonorsPublished WorksAffiliations


William Munck is the Managing Partner of Munck Carter, LLP and Chairman of the Firm's Intellectual Property Section. Mr. Munck has nearly twenty years of experience counseling clients regarding development of market-focused offensive and defensive intellectual property portfolios. His technical expertise is in the hardware, software, firmware, wired/wireless communication, energy and medical device/healthcare fields.

Mr. Munck's practice emphasizes long-range corporate strategies for the domestic and foreign procurement, management and enforcement of intellectual property rights; defense against third-party infringement claims, including prosecution of reexamination proceedings; analysis, development and rendering of legal positions and opinions; and negotiation of technology transfers and related intellectual property issues associated with private and public financings, mergers, acquisitions, and industry and patent troll licensing matters.

Mr. Munck began his career with a full-service Texas-based law firm and a prominent New York IP litigation boutique.

He also worked for several years as a lead software engineer and project manager with Axiom Systems, Inc. in New York, where Mr. Munck Managed a design team responsible for designing and developing an industrial laboratory control system.

Since inception of the annual Texas Super Lawyer award by Texas Monthly Magazine in 2003, Mr. Munck has been selected repeatedly by his peers. Since inception of the annual National Super Lawyer award by Corporate Counsel Magazine in 2006, Mr. Munck has also been selected repeatedly by his peers. Likewise, Mr. Munck is repeatedly recognized by Chambers and Partners Publishing as one of the Best Intellectual Property Attorneys in the Southwest, by LawDragon.com as one of the 500 leading lawyers in America, and has been named a "Fellow" in the Dallas Bar Association by his peers.

Representative Experience Since January 2008 :

  • 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 assertion of patent infringement claim in the Eastern District of Texas, and defended reexamination proceeding with the United States Patent and Trademark Office.
  • Vending company in five patent infringement actions relating to vending machines in West Virginia district court and on appeal to the Federal Circuit Court of Appeals, secured stay pending final outcome of reexamination proceeding, and developed and asserted patent infringement counterclaims.
  • International pharmaceutical company in two patent infringement cases against a generic manufacturer in the Northern District of Texas
  • Telecommunications 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.
  • Medical device company in defense of action to declare patents not infringed or invalid.
  • Advanced optoelectronic company in a patent infringement and trade secret action in the United States District Court for the Eastern District of Texas
  • Gabriel Technologies Corp. and its subsidiary Trace Technologies, LLC in a $1+ billion lawsuit filed in the United States District Court for the Southern District of California against Qualcomm Inc. and its subsidiary, SnapTrack, Inc.
  • Government contractor in a trademark and unfair competition dispute in Federal Court in Florida.
Current Employment Position(s):
Partner
Chairman, Intellectual Property (IP) Section
Areas of Practice:
Intellectual Property
Patent Preparation, Prosecution and Reexamination
IP Litigation
IP Licensing
IP Opinions
IP Due Diligence
Litigation Percentage:
20% of Practice Devoted to Litigation
Bar Admissions:
Texas, 1992
New York, 1994
U.S. Patent and Trademark Office, 1994
U.S. Court of Appeals 5th Circuit
U.S. Court of Appeals Federal Circuit
U.S. District Court Northern District of Texas, 1994
U.S. District Court Eastern District of Texas
U.S. District Court Southern District of New York, 1994
U.S. District Court Eastern District of New York, 1994
U.S. District Court Middle District of Florida
U.S. District Court District of Colorado, 2000
U.S. District Court Southern District of West Virginia
U.S. District Court Southern District of California
Education:
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


Published Works:
Safeguarding Your Assets: How You Can Protect Your Intellectual Property, Smart Business Dallas, April, 2007


Honors and Awards:
Repeatedly listed by Chambers & Partners as a Top IP Attorney


Named D Magazine's Best Lawyers in Dallas, 2007 - 2009


Named Lawdragon's 500 Leading Lawyers in America, 2006 - 2009


Named Lifetime Fellow of the Dallas Bar Association, 2009


Named National Super Lawyer, Texas Monthly Magazine, 2006 - 2009


Named Texas Super Lawyer, Texas Monthly Magazine, 2003 - 2009


Professional Associations and Memberships:
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
1999-2005; 2010, Member


STARTech Early Ventures, L.L.P., Advisory Board
1997-2004, Member


State Bar of New York


United States Patent and Trademark Office


United States Lacrosse, North Texas Chapter, 2005 - Present


Birth Information:
April 13, 1964, Freeport, New York, United States of America
Legal Services
E-Newsletter - Business Organizations and Transactions - To Subscribe
News and Resources - Latest Intellectual Property News - Read More

 
Munck Carter, LLP
600 Banner Place Tower
12770 Coit Road
Dallas, Texas 75251

Marshall Office
110 South Bolivar, Suite 204
Marshall, Texas 75670

Home | Firm Overview | Practice Areas | Careers | Attorney Profiles | E-Newsletter
News and Resources | Contact Us | Resource Links | Disclaimer | Site Map
Munck Carter, LLP 600 Banner Place Tower 12770 Coit Road Dallas, Texas 75251 Tel 972.628.3600
Marshall Office 110 South Bolivar, Suite 204 Marshall, Texas 75670 Tel 903.935.7900