Thomas Fasone

Partner

phone: (415) 785-3762 | fax: (415) 785-3805

email: tfasone@ghiplaw.com

Thomas Fasone brings over 20 years of top-ranked The American Lawyer (Am Law) intellectual property litigation experience to Garteiser Honea. Thomas has a proven record of success in obtaining significant trial victories on behalf of clients in “bet the company” matters. He has a broad range of intellectual property law experience in the areas of large scale complex patent litigation, licensing, monetization strategies, trade secret, trademark, copyright, and general intellectual property counseling. Thomas served as the first general counsel for one of the firm’s clients after retiring from McKool Smith. During his career, Thomas has represented clients in numerous patent infringement cases before United States  District Courts as well as the International Trade Commission. Thomas’s wide-ranging patent litigation, intellectual property counseling, and licensing experience encompasses the following :  mobile communication and computer device connectivity (3G/4G/LTE/5G/Wi-Fi/Bluetooth/NFC), industrial and consumer lighting (LED/LCD), computer hardware and software systems, mobile smart device hardware and software systems, consumer life-enhancing medical devices, global positioning navigation and tracking systems (GPS/GPRS), automobile interface and infotainment systems (MirrorLink/CarPlay/Android Auto), financial chargeback and anti-theft systems, mobile and internet-based sports betting and gaming, consumer remote monitoring and security systems (Smart Homes), web based search and display systems, media access systems (V-Chip), and various technologies within the Internet of Things (IoT).

Representative Matters
  • i4i Limited Partnership v. Microsoft Corporation.  Represented i4i Limited Partnership against Microsoft Corporation for infringement of patented technology covering a method and system for manipulating architecture and contents of documents generated by Word 2007. The jury found in favor of i4i Limited Partnership and awarded damages of $290m. On appeal, the United States Supreme Court affirmed lower court findings in favor of i4i Limited Partnership.
  • Medtronic Vascular, Inc. vs. Boston Scientific.  Represented Medtronic against Boston Scientific for infringement of patented technologies covering drug-eluting stent devices. Obtained a $250m jury verdict against Boston Scientific.
  • Droplets, Inc. vs. Overstock.com, et al.  Represented Droplets, Inc. against J.C. Penney, overstock.com, and Sears over infringement of patents covering web-based search and display technologies. Achieved a $15m jury verdict against overstock.com.
  • AT&T v. Excel Communications.  Defended Excel Communications in landmark software patent litigation brought by AT&T before the United States District Court for the District of Delaware.
  • Medtronic Vascular, Inc. Board of Regents, University of Texas System v. Setagon, Inc. et al.  Represented Medtronic in a dispute involving inventorship over patents covering cardiovascular stent devices with porous layers for eluting therapeutic agents.
  • Ericsson v. Apple.  Represented Ericsson in numerous matters before the United States District Court for the Eastern District of Texas and the United States International Trade Commission.
  • Ericsson v. Samsung. Represented Ericsson in proceedings before the International Trade Commission. Resulted in favorable global license agreements with Samsung covering dozens of patents and numerous consumer mobile telecommunications devices.
Education and Prior Experience

Thomas was selected to participate in the University of Texas’s highly competitive Gifted and Talented Summer Semester Program during his junior year of high school, achieving a 4.0 grade point average and 12 hours of university level credit in 1983. Thomas then enrolled at St. Mary’s, one of the nation’s premier private Catholic universities, as a Presidential Scholar, where he graduated summa cum laude. He went on to receive his Juris Doctor from the University of Houston Law Center in 1992. While in attendance at the University of Houston Law Center, Thomas served as an active member of the Board of Advocates and the Mock Trial Team. He also was selected to participate in the Law Center’s highly competitive internship programs for its world-renowned Health Law & Public Policy, Environmental Law and Immigration Law Institutes.  Prior to joining Garteiser Honea, Thomas practiced “bet the company” complex intellectual property litigation for over 20 years with the prestigious Dallas-based intellectual property litigation powerhouse McKool Smith.  After retiring from McKool Smith, one of the firm’s technology development clients recruited Thomas to join its ranks as the company’s very first General Counsel.

Admissions

State Bar of Texas

U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Northern District of Texas
U.S. District Court for the Eastern District of Texas
U.S. District Court for the Western District of Texas
U.S. Court of Federal Claims

Publications

And You May Find Yourself in a Large Document Review – American Corporate Counsel (ACC) Docket, May 2009.

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