Mr. William August Munck | Private Law Practice

William Munck is the Managing Partner of Munck Wilson Mandala, LLP and Chairman of the Firm's Intellectual Property Section.  Mr. Munck has over 17 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, medical device and energy 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 third-party 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 management 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 for over 10 years. 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 by D Magazine as one of the Best patent litigation attorneys in the Dallas Metroplex.

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.