CONTACT INFORMATION:
Gordon T. Arnold
Registered Patent Lawyer,
Attorney at Law, Arbitrator,
Mediator
Arnold & Ferrera, L.L.P.
2401 Fountain View, Suite 630
Houston, TX 77057
713.972.1649 direct
713.972.1180 fax
garnold@arnold-iplaw.com
www.arnold-iplaw.com
Education
BSEE, 1984, University of Texas
Austin, Texas
JD, 1988, University of Houston Law Center
Houston, Texas
Professional ExperienceComplex commercial practice, focused in intellectual property: litigation, arbitration, licensing negotiation, and other transactions, mediation, & application preparation and prosecution.
Attorney in Charge of multiple lawsuits, including patent cases, copyright matters, trade secret litigation, trademark suits, and licensing disputes, including appeals.
Extensive licensing work domestically and internationally, dealing with multiple related patents from the US, Asia, and Europe.
Oversight of European patent litigation involving refinery cleaning technology.
Served as arbitrator in multiple commercial arbitrations, including intellectual property matters.
Multiple patent and trademark applications in a wide variety of technology areas, both drafting and prosecution.
Federal Courts and Administrative Agencies where Admitted or Appeared
Court of Appeals for the Federal Circuit
Southern District of Texas
Northern District of Texas
Western District of Pennsylvania
Central District of California
Eastern District of Michigan
Western District of Michigan
United States Patent & Trademark Office, Patent Attorney Registration No. 32,395Professional Leadership Positions
American Bar Association, Intellectual Property Section:
Secretary 2004-2005
Council Member 2001-2004
Chair, Committee 108, Subcommittee C, Bona fied Purchaser Defense, 2001-2002
Co-Chair, 2000 Annual Meeting CLE Program
Co-Chair, 1999 Spring CLE Program
Chair, Committee 108, Patent System Policy, 1996-1999
Chair, Committee 104, Patent Contracts Other Than Government, 1994-1995
Chair, Committee 101, Subcommittee A, Patent Term Length, 1994-1995
Chair, Annual Meeting Program Planning, 1992-1993 (Co-chair, 1995-1996)
Member, Nominating Committee, 1993-1994American Intellectual Property Law Association:
Member, Nominating Committee 2003-2004
2004 Mid-Winter Institute Planning Committee
Vice-Chair, Patent Law Committee, 2002-2004Houston Intellectual Property Law Association:
President-Elect, 2004-2005
Delegate to State Bar of Texas Resolutions Committee, 2004
Delegate to National Council of Intellectual Property Law Associations, 2003
Secretary, 1993-1994; 2001-2002
Amicus Committee, 1996-1997; 1999-2000
Member of the Board, 1997-1998
Chair Finance and Audit Committee, 1997-1998Houston Bar Association:
Co-Chair of CLE Committee, 2004-2005
CLE Committee, 1999-2003
Law and Arts Committee, 1999-2000Member by Examination of the Chartered Institute of Arbitrators
National Arbitration Forum Arbitrator
International Center for Dispute Resolution (AAA) Arbitrator
Member of the World Intellectual Property Law Arbitration and Mediation Center's Domain Name Panel
Associate Member of Institute for Transnational Arbitration
Certified Mediator
Publications & Speeches
Misuse and Antitrust in Intellectual Property Licenses, Advanced Licensing Transactions, Legal and Business Issues (Co-Chair), Law Seminars International, Houston, Atlanta, 2004.When Do Damages Come to the Fore?, American Intellectual Property Law Association 2003 Fall Meeting.
Negotiating Technology Outsourcing, Law Seminars International, Seattle, 2003.
Intellectual Property Practically Speaking, Texas Public Relations Association's 2003 Annual Conference, Houston, 2003
Update on the Law of Patents, American Intellectual Property Law Association, Mid-Winter Institute, Marco Island, 2003
When Do You Need An Opinion on a Patent?, Law Education Institute, Snowmass, 2003
Valuation of Intellectual Capital and Intellectual Property in Tough Times, Texas Technology Conference, Houston, 2002.
What Every Business Person Should Know About Intellectual Property, AIChe 2002 Spring National Meeting, New Orleans, 2002.
How to Structure Corporate IP Operations, American Intellectual Property Law Association, 25th Mid-Winter Institute, Phoenix, 2002.
When Does the Specification Limit the Scope of the Claims?, American Intellectual Property Law Association, Annual Meeting, Arlington, 2001.
Written Description and Enablement - Claim Interpretation, Priority, and Invalidity Under 35. U.S.C. § 112, American Bar Association Section of Intellectual Property Law, Summer IPL Conference, Seattle, 2001.
Selling Non Obviousness in the Courtroom - Marshaling the Evidence, State Bar of Texas IP Section, Intellectual Property Law 2001, Dallas, 2001.
Can Activities In Mexico Cause Liability In The US For Patent Infringement?, Texas-Mexico Bar Association, Seventh Annual Conference, Chihuahua, Mexico, 2000.
E-Commerce and Business Methods -- What Type of Evidence Must a Challenger Use?, Practicing Law Institute, Patent Litigation 2000, New York City, 2000.
Inequitable Conduct, Laches and Other Non-statutory Defenses, PLI Patent Litigation Program, New York, 1996, 1997, 1998; National Inventors Hall of Fame, Akron, 2000; LEI Patent Program, Vail, 2000.
Developing The Evidence on Patent Validity Issues, Practicing Law Institute, Patent Litigation 1999, New York City, 1999.
Definiteness v. Equity: The Tension between the Desire to Protect the Inventor's Contribution and the Desire for Clear Lines between Infringement and Non-infringement. National Inventor's Hall of Fame Induction, Akron, 1999.
Update on the New Patent and Trademark Office Rules, American Bar Association Intellectual Property Section Annual Meeting, 1998.
Developing the Evidence of Invalidity, PLI Patent Litigation Program, New York, 1993-1995, 1999; LEI Patent Program, Vail, 1997.
Antitrust Problems when Asserting Intellectual Property Rights: Walker Process and Handgards Claims, 1994 PLI Patent/Antitrust Program, West Coast.
Best Mode Disclosure: Does the Information Improve the Operation or Effectiveness of the Claimed Invention? University of Texas Intellectual Property Law Journal, 1993.
Changes in the Best Mode Requirement: Satisfying the Preferred Embodiment Rule and Using the Preferred Defense of the Nineties, 1994 ABA IP Section CLE Program, Washington, DC; 1992 State Bar Of Texas IP Section Annual CLE Program, Austin.
Inequitable Conduct: Things to Look for - Things to Look Out for, 1990 PLI Patent Litigation Program, New York.
Semiconductor Chip Protection, Maryland Journal of International Law and Trade (1988).
Guest Lecturer, Rice University, Houston, MBA Program, 1995-1998 on Intellectual Property Strategy.
Example Areas of Industry Experience
Fuel cells, microprocessors, semiconductor manufacturing, signal processing, optics, lasers and fiber-optics, computers, display technology, telecommunications, geophysics, seismic data acquisition, processing, and interpretation, drilling technologies, measurement while drilling, logging while drilling, liquid natural gas, gas to liquids, business methods, trading systems, construction technology, offshore platforms, FPSO, mooring buoys, ship hulls, power systems, recording systems and connectors, sensors, biotechnology, database structures and other computer software and communication protocols, metallurgy, foundry technology, paper products, refractory chemistry, water purification, complex mechanical systems, thermodynamics, hydraulics, injection molding, charge coupled devices, fly-by-wire systems, vehicular wheel and suspension systems, displacement ship-hulls, floating production platforms, global positioning and other navigation systems, oil and gas, music industry, book publishing, shoe and other fashion industry, internet businesses, web page design and privacy, warranty and insurance.
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