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Steve R. Borgman

Steve R. Borgman Partner, Intellectual Property

Steve’s practice focuses on intellectual property. For more than 30 years, Steve has handled a wide variety of IP cases for clients in various industries, including numerous patent cases in federal courts throughout the U.S., and before the U.S. International Trade Commission. In addition, he has handled many other IP cases involving claims of copyright infringement, trademark infringement, cybersquatting, false advertising, and unfair competition, as well as cases involving trade secrets and covenants not to compete. He also has significant experience with the arbitration and mediation of IP disputes.

Besides litigation, Steve’s practice includes counseling clients on IP issues. Steve has handled many transactions involving mergers and acquisitions with substantial IP issues, as well as license and technology development agreements. He also prosecutes patents and applications for trademark and copyright registrations.

Experience Highlights

  • (W.D. Tex.) — Represented a network service provider in a patent infringement case relating to telecommunications networks; the V&E team led the briefing and argued the motions to dismiss on behalf of the joint defense group and obtained an order recommending dismissal of the case for lack of patentable subject matter, prior to any discovery
  • (E.D. Tex.) — Led the defense of a power supplier in a case involving mesh wireless systems for energy management; we obtained a dismissal without any payments by explaining why our client did not infringe
  • (S.D. Tex.) — Obtained a dismissal of patent infringement claims against a client who was accused of infringing a patent involving laying flexible pipes on the ocean floor; after investigating the matter, Steve explained to the other side why his client did not infringe, and the other side agreed and dismissed its case
  • (N.D. Tex.); (Fed.Cir.) — Obtained a complete victory for a client accused of patent infringement and misappropriation of trade secrets in connection with computer software and methods for horizontal drilling of oil and gas wells; after obtaining a summary judgment on the trade secrets claim, V&E tried the case and obtained a judgment for our client; we obtained an affirmance of the judgment on appeal 
  • (ITC) — Represented a retail plastics bag manufacturer before the ITC relating to patent infringement by foreign manufacturers and domestic importers of plastic bags; we obtained one of only two general exclusion orders issued by the ITC in 2004 and successfully stopped the importation of infringing plastic bags by a number of competitors
  • (N.D. Ill.) — Led our client’s team opposing a putative class action case involving claims for cybersquatting, trademark infringement and dilution, and the like; this case involved unique legal issues for IP class action claims; after defeating class certification, we were able to negotiate a favorable settlement
  • (N.D. Tex.) — Defended a large law firm accused of copyright infringement due to the submission of prior art references to the Patent Office as part of its patent prosecution practice; we obtained a summary judgment in our client’s favor on fair use grounds
  • (S.D. Tex.) — Defended a software company against claims of copyright infringement and misappropriation of trade secrets in connection with software products for sharing project files and information in the energy industry; we mediated the case and were able to negotiate a structured settlement
  • (S.D. Tex.); (Fed. Cir.); (5th Cir.) — Represented an oilfield services client from claims of breach of a patent license agreement; after we successfully established federal subject matter jurisdiction, the case settled on favorable terms

Patent Litigation

  • (E.D. Tex.) — Represented an oil and gas drilling contractor in a patent infringement litigation related to supervisory control and data acquisition technology; negotiated a favorable settlement for client 
  • (E.D. Tex.) — Represented an oil and gas company in a patent infringement litigation related to technology for controlling networked devices; negotiated a favorable settlement for client 
  • (D. Del.) — Defended a software company against claims of patent infringement relating to software used to manage security and access rights throughout an organization; we obtained an early settlement and dismissal
  • (S.D. Cal.) — Represented a wireless technology company in a patent infringement litigation relating to efficient bandwidth utilization in wireless communication systems
  • (S.D. Fla.) — Represented a wireless technology company in a patent infringement suit relating to wireless broadband technology
  • (E.D. Tex.) — Represented a major smartphone manufacturer against patent infringement claims relating to antenna technology; including successful Daubert challenges against plaintiff’s damages experts
  • (E.D. Tex.) — Represented a major smartphone manufacturer in patent infringement litigation relating to push technology; we negotiated a low settlement before trial
  • (E.D. Tex.) — Represented a major smartphone manufacturer in patent infringement litigation relating to touchscreen technology; successfully moved to dismiss plaintiff’s willfulness claims and negotiated a favorable settlement for client
  • (E.D. Tex.) — Defended a bank against claims that its website’s site locator infringed a patent and was able to negotiate an early settlement and dismissal on favorable terms

International Trade Commission Litigation

  • (ITC) — Represented a digital radio technology company in an investigation brought by a patent holding company; the patents at issue involved parallel processing CPUs; resolved the case with a favorable settlement
  • (ITC) — Represented a major smartphone manufacturer before the ITC relating to alleged patent infringement concerning flash memory chips; we obtained a favorable ruling of no violation and no infringement after a two-week hearing before the ALJ
  • (ITC) — Defended a major smartphone manufacturer in an ITC investigation involving several patents relating to flash memories and methods of manufacturing them; the case settled shortly before trial began on favorable terms for our client
  • (ITC) — Represented a major smartphone manufacturer in an investigation brought by BTG International before the ITC relating to NAND multi-level flash memory devices; we tried the case to the ALJ and obtained a favorable settlement shortly before issuance of the ALJ’s opinion

Trademark Litigation

  • (S.D. Fla.) — Defended a consortium developing a large bridge project against claims of trademark infringement; negotiated and obtained a quick dismissal of the case on favorable terms and before any answer was due
  • (S.D. Tex.); (TTAB) — Successfully handled a trademark case to enforce our client’s rights in a mark for use in connection with offshore oil equipment and services; after suit was filed, the other side quickly agreed to our client’s demands regarding ownership and use of the mark; we obtained injunction as part of the settlement, and successfully petitioned the Trademark Office to reinstate our client's trademark registration
  • (S.D. Tex.) — Defended a real estate development company against claims of trademark infringement relating to banking and financial services and was able to obtain a consent agreement involving ongoing use of our client's mark and a dismissal of the case
  • (S.D. Tex.) — Lead attorney in successfully defending our client in a case involving claims of cybersquatting, trademark infringement and dilution, and unfair competition; the case settled on favorable terms for our client
  • (S.D. Tex.); (5th Cir.); (Singapore arbitration) - Represented a manufacturer of passenger loading bridges from claims of breach of contract, trade dress infringement, and misuse of confidential information
  • (S.D. Tex.) — Lead attorney for a building services company defending against a claim of trademark infringement; we obtained an early dismissal of all claims
  • (N.D. Tex.); (D.N.J.); (S.D.N.Y); (D. Conn.); (D. Mass.); (C.D. Cal.) — Successfully defended a manufacturer of computer hardware from claims of trademark infringement, trademark dilution, and false advertising; the case involved six different actions in various state and federal courts; we were able to structure a favorable settlement for our client
  • (S.D. Tex.) — Defended an oilfield equipment company against claims of trademark infringement and false advertising; after defeating summary judgment motions and successfully reviving trade secrets counterclaims against the plaintiff, we settled the case on favorable terms

False Advertising

  • (S.D. Tex.) — Successfully pursued our client’s false advertising claims against a competitor involving cellular telephone systems and services; we obtained both a TRO and preliminary injunction against the defendant and reached a favorable settlement
  • (S.D. Tex.) — We handled false advertising claims against a client’s competitor in connection with cellular telephone products and services and obtained a permanent injunction very early in the case
  • (S.D. Tex.) — We successfully defended our clients against claims of false advertising involving marine engines and equipment and persuaded the court to dismiss the case early
  • (S.D. Tex.) — We defended our clients against claims of false advertising and trademark infringement in connection with analytical instruments and related equipment; we were able to obtain a favorable settlement after a successful mediation

Copyright Litigation

  • (S.D. Tex.) — Lead attorney defending against copyright infringement claims involving digital video recorders
  • (S.D. Tex.) — Lead attorney for a chemical company defending against claims of copyright infringement, misappropriation of trade secrets, and the like in connection with a dispute over custom software
  • (S.D. Tex.) — Successfully defended an oil company against claims of copyright infringement involving software; the V&E team negotiated a favorable settlement after limited discovery
  • (S.D. Tex.) — Defended an advertising agency and its photographer and client against claims of copyright infringement; case settled quickly after V&E obtained a favorable summary judgment ruling for our client

Trade Secrets & Unfair Competition

  • (Tex. Dist. − Harris Cnty.) — Pursued our client’s claims of theft of trade secrets against a former agent for cellular telephone services and products; we obtained a successful settlement after TRO hearing
  • (Tex. Dist. − Harris Cnty.) — Defended our clients against claims of misappropriation of trade secrets involving customer and sales information relating to computer products and services; we obtained a favorable settlement allowing our clients to continue competing
  • (Tex. Dist. − Harris Cnty.) — Pursued claims of misappropriation of trade secrets against our client’s former customer representative; we obtained a favorable result keeping the representative from using our client’s customer information
  • (Tex. Dist. − Fort Bend Cnty.) — Successfully pursued trade secrets claims for a software company against former employees; injunctive relief
  • (Tex. Dist. − Fort Bend Cnty.) — Pursued trade secrets claims against consultants who previously worked for our client in connection with project management software
  • (Tex. Dist. − Harris Cnty.); (Tex. App. − Houston [14th Dist.]) — Successfully defended our client against state law claims regarding computer software that were held preempted by federal copyright law; we obtained favorable rulings from both state and federal courts in multiple proceedings

Licensing & Technology Transfer

  • Handles IP issues in connection with a merger of two oilfield services companies that had a reported value of over $3 billion
  • As outside counsel, handled the IP issues in connection with the acquisition of a North American gas storage and transportation business valued at about $1.5 billion
  • Served as co-lead outside counsel role on IP issues in connection with the sale of an energy trading business reportedly valued at about $1 billion
  • Lead outside counsel role in handling the IP issues in connection with the sale of a pipeline business; the reported purchase price was over $900 million
  • A software company in intellectual property efforts related to the acquisition of its assets and liabilities from bankruptcy, including the licensing and assignment of various intellectual property rights, in a deal valued at nearly $350 million
  • Lead outside IP counsel for the acquisition of a software company based in Israel in a deal valued at $150 million
  • Lead role in representing a retailer in connection with its outsourcing agreement with EDS for various services, including production support, network support, and applications support services, and enhancement development; contract valued at more than $30 million
  • Lead role in representing an energy services company in connection with its outsourcing agreement with Andersen Consulting for applications support and maintenance, production management, development support, and help desk support services; contract valued at about $15 million

Contact Details

Houston

T +1.713.758.2002
F +1.713.615.5758
sborgman@velaw.com
1001 Fannin Street
Suite 2500
Houston, TX 77002
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Steve's Practices

  • The University of Iowa College of Law, J.D. with high distinction, 1986 (Order of the Coif; Phi Delta Phi)
  • Iowa State University, B.S., Industrial Engineering, 1983 (Alpha Pi Mu)
  • Admitted to practice: Texas; United States Patent and Trademark Office; various federal district and appellate courts
  • Managing Intellectual Property, IP Star, 2014–2016
  • Chambers USA, Intellectual Property (Texas) Recognized Practitioner, 2017
  • Member: American Intellectual Property Law Association; Intellectual Property Law Section, State Bar of Texas; Houston Intellectual Property Law Association; International Trade Commission Trial Lawyers Association