Education

Rice University

B.S., Chemical Engineering, 1986
  • cum laude

Rice University

B.A., Mathematics, 1986
  • cum laude

The University of Texas School of Law

J.D., 1992
  • with honors

Bar Admission

Texas

Ross Spencer Garsson

Member

Overview

Ross Spencer Garsson has more than 20 years of experience practicing intellectual property and technology law. Ross focuses his practice on intellectual property litigation, patent prosecution and intellectual property portfolio management in a variety of technology areas, including chemical, nanotechnology, semiconductor and computer technologies. Ross has litigated numerous intellectual property disputes in state and federal district courts, in the U.S. Court of Appeals, and at the U.S. International Trade Commission.

Ross has worked closely with nanotechnologists to procure and license their technologies. His work with the Richard E. Smalley Institute for Nanoscale Science and Technology at Rice University and the Alan G. MacDiarmid Nanotech Institute at the University of Texas at Dallas has resulted in some of the most important patents for producing and manipulating carbon nanotubes.

Prominent Assignments

Represented Bain Consulting (now Growtheorem Consulting) in a breach of contract suit regarding health care payment technologies. A unanimous $6.4 million dollar jury verdict was received for Bain Consulting finding that defendants had inexcusably breached and tortuously interfered with agreements of Bain Consulting. The owner and president of defendants was also held jointly and severally liable by successfuly piercing the corporate veil. Bain Consulting LLC v. Talon Transaction Technologies Inc., Cause No. DC-13-03502-A, 14th Judicial District Court (Dallas County, Tex.).

Represented BioTras in a patent inventorship and misappropriation trade secret dispute regarding a model used for anatomic training and injection practice (such as for spinal anesthesia and/or lubar epidural steroid injections). BioTras, LLC v. Clear Ballistics, LLC, Civil Case No. 3:16-CV-00566K (N.D. Tex.).

Represented Quicken Loans in defense of a patent infringement suit involving systems and methods for personalized mass marketing. Phoenix Licensing, L.L.C v. Quicken Loans Inc.; Civil Case No. 2:15-CV-1377 (E.D. Tex.).

Represented Xitronix in defense of a patent infringement claim pertaining to devices for nondestructively evaluating semiconductor chips. A jury verdict was returned holding that Xitronix did not infringe the patents-in-suit, including a jury verdict that all of the asserted patent claims were invalid. During post-trial motions, the Court upheld the jury verdict in its entirety and found additional legal reasons why all patent claims were invalid. KLA-Tencor Corporation v. Xitronix Corporation; Civil Case No. 08-CA-723SS (W.D. Tex.).

Represented Save Mart Supermarkets in defense of a patent infringement suit involving a gas rewards program. CodePro Innovations v. Shell Oil Company; Civil Case No. 4:12-CV-02351 (S.D. Tex.).

Represented ATX Innovation (Tabbedout) in defense of a patent infringement suit directed to Tabbedout’s mobile device application for opening a tab and paying a bill at a restaurant/bar. Ameranth, Inc. v. ATX Innovation, Inc.; Civil Case No. 12-CV-1656 JLS (NLS).

Represented defendant AFC Industries in defense of a patent infringement claim pertaining to its computer monitor display systems. Mass Engineered Design, Inc. v. 9X Media, Inc.; Civil Case No. 2:09-CV-358-JRG (E.D. Tex.).

Represented Drivve US in defense of a patent infringement claim involving Drivve’s software product for office workplace productivity solutions. Content Extraction and Transmission LLC v. Drivve US LLC; Civil Case No. 12-CV-1188 (ALC)(GWG) (S.D.N.Y.).

Represented Hudson Products in defense of copyright infringement/breach of contract claim for software product. Visibility Corp. v. Hudson Products Corp.; Civil Case No. 1:10-cv-12279-RGS (D. Mass.).

Represented Jelly Belly Candy Co. in defense of a patent infringement claim pertaining to an internet organizer for accessing graphically and topically based information. Geotag, Inc. v. The Western Union Corp.; Civil Case No. 2:10-CV-00574 (E.D. Tex.). 

Represented BancVue in a patent infringement suit involving BancVue’s patented technology for methods and systems for operating a reward program through a financial institution over a network. Case settled. Edo Interactive, Inc. v. BancVue, Ltd., Civil Case No. 3:11-CV-00341 (M.D. Tenn.).

Represented ATI in an appeal of a patent infringement lawsuit pertaining to side impact sensors used in automobiles. Automotive Technologies Int’l, Inc. v. Siemens VDO Automotive Corporation; No. 2011-1061 (Federal Circuit).

Represented DataCom Design in a misappropriation of trade secrets and breach of contract action against prior employee and his new employer. DataCom Design Group LLC v. Jaffe Holden, Inc., Cause No. 10-0618 (207th Judicial District Court of Hays County, Texas).

Represented BME in defense of a patent infringement suit regarding memory shaped surgical staples and devices for closing such staples. InteliFUSE Inc. v. BioMedical Enterprises, Inc., Civil Action No. 1:05-CV-8093 (S.D.N.Y.).

Represented Microsoft in patent infringement suits in which both parties had claims of patent infringement against one another. Claims included infringement by Alcatel of Microsoft’s patented network gateway technology. Alcatel USA Sourcing Inc. v. Microsoft Corporation, Civil Action Nos. 6:06-CV-499 and 6:06-CV-500 (E.D. Tex.).

Represented Microsoft in defense of a patent infringement suit regarding video compression. Jury verdict for Microsoft was obtained (no infringement). Multimedia Patent Trust v. Microsoft Corporation, Civil Action No. 06-CV-0684 (S.D. Cal.).

Represented 3N Global in defense of patent infringement claims directed to its alert notification system. Zimmer v. 3N Global Inc.; Civil Case No. 1:08-CV-342 (S.D. Ohio).

Represented 3M and 3M Innovative Properties in a case against Sony involving infringement of 3M’s patented lithium-ion battery cathode technology. Certain Rechargeable Lithium-Ion Batteries, Components Thereof, and Products Containing Same (337-TA-600) (United States Int’l Trade Commission).

Represented plaintiff DDB in a patent infringement suit involving DDB’s patented technology for broadcasting live events to remote locations and producing a computer simulation of the events at those locations. DDB Technologies, L.L.C. v. MLB Advanced Media L.P., Civil Action No. 1-04-CA-352- LY (W.D. Tex.).

Representative Clients

  • Alliance Spine
  • Clean Energy Labs
  • Entox Solutions
  • eyeQ Insights
  • FloSports
  • Metric Medical (Dr. Casey Fox)
  • Rice University
  • SynaptaGenX (Dr. Kenneth Blum)
  • Umbel
  • University of Texas System

Professional Involvement

  • Founding Master, Barbara Jordan Inns of Court
  • American Bar Association
  • Austin Bar Association

Community Involvement

  • Advisory Board Member, Rice Alliance for Technology and Entrepreneurship (Houston)
  • Board of Directors, Austin Gifted School (Ace Academy)
  • Judge, The University of Texas, I2P Global and National Competitions
  • Judge, Rice Alliance Competitions (Business, Biotechnology and Nanotechnology)
  • Steering Committee, Austin Rice Alliance

Publications/Presentations

Mr. Garsson is a frequent writer and lecturer on topics related to intellectual property matters. Recent articles and events/panels include:

  • Featured, “Greenberg Traurig Prevails in $6.4 Million Health Care Billing Technology Case,” Texas Lawbook, April 2015
  • Anderson, K.L., Garsson, R.S., Windham, D.R., “Keys To IP Collaborations With Universities: Part 3,” Law360, March 9, 2015
  • Pham, C.H., Garsson, R.S., “What nanotech inventors need to know about trade secrets and the prior user rights defense,” Nanotechnology Reviews, December 2014
  • Anderson, K.L., Garsson, R.S., Windham, D.R., “Keys To IP Collaborations With Universities: Part 2,” Law360, October 20, 2014
  • Anderson, K.L., Garsson, R.S., Windham, D.R., “Keys To IP Collaborations With Universities: Part 1,” Law360, July 21, 2014
  • Bell, C.L., Garsson, R.S., Tomsen, J., “Recent Developments in Nanotechnology Standards,” Nanotechnology Law & Business, Vol. 10.2, Winter 2013, 105-113
  • Panelist, “The Post-Election Political Landscape and What It Means for Your Business: From Regulatory Compliance to Tech Innovation,” Association of Corporate Counsel, Austin, TX
  • Garsson, R.S., Pham, C.H., “Strategies for Post-Grant Reviews and Other Proceedings for Challenging an Issued Patent,” Nanotechnology Reviews, 2012, Vol. 1, Issue 6, 541-544
  • Pham, C.H., Garsson, R.S., “Accelerated Examination, Prioritized Examination, and Other Petitions to Make Special: What’s Right for You?” Nanotechnology Reviews, 2012, Vol. 1, Issue 5, 455-459
  • Garsson, R.S., Pham, C.H., “Uncle Sam Wants You to Be the First-Inventor-To-File for Nanotechnology Inventions,” Nanotechnology Reviews, 2012, Vol. 1, Issue 4, 383-386
  • Speaker, “From IP to Company Formation: Commercializing Innovation,” Tech Connect World,Nanotech 2012 Conference, Santa Clara, CA
  • Panelist, “IP Litigation vs. Ordinary Cases,” Austin Bench Bar Conference - Litigation Topics, San Antonio, TX
  • Speaker, “Patents in the University Setting - Proper Incubation of Knowledge Products,” Rice University
  • Speaker, “Licensing Intellectual Property” and “Intellectual Property Primer,” Rice Alliance Technology Entrepreneurship Workshops

Court Admissions

  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Fifth Circuit
  • U.S. Court of Appeals for the Ninth Circuit
  • U.S. District Court for the Eastern District of Texas
  • U.S. District Court for the Northern District of Texas
  • U.S. District Court for the Southern District of Texas
  • U.S. District Court for the Western District of Texas
  • U.S. Patent and Trademark Office