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Steve R. Borgman
Steve R. Borgman
Partner — Intellectual Property
Partner — Intellectual Property

Steve R. Borgman

Steve R. Borgman
Houston

1001 Fannin Street
Suite 2500
Houston, TX 77002

Steve R. Borgman

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

  • Crestview Partners in IP diligence and advice as lead investors in the $588 million merger of Matlin & Partners Acquisition Corporation and U.S. Well Services, combining into a publicly listed hydraulic fracturing company

  • Helmerich & Payne, Inc. in intellectual property matters associated with its acquisition of Magnetic Variation Services, LLC (MagVAR), which provides geomagnetic modeling services to enhance the accuracy of directional drilling surveys

  • Helmerich & Payne, Inc. in intellectual property matters related to its agreement to acquire MOTIVE Drilling Technologies, Inc., a drilling software company, for $75 million payable at closing and up to an additional $25 million in potential earnout payments

  • (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

  • (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

  • (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

  • (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

  • (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

  • (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.) — 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

  • (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

  • 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

Credentials

  • 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)
  • Chambers USA, Intellectual Property (Texas) Recognized Practitioner, 2017 and 2018
  • IAM Patent 1000: The World’s Leading Patent Practitioners, Patent Litigation, Texas, 2017
  • Managing Intellectual Property, IP Star, 2014–2017
  • 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
  • Texas
  • United States Patent and Trademark Office
  • various federal district and appellate courts
  • “University of Texas School of Law 24th Annual Advanced Patent Law Institute,” November 7, 2019 (speaker)
  • ITC Trial Lawyers Association Event, May 2, 2019 (speaker)
  • “University of Texas School of Law Annual Advanced Patent Law Institute,” November 2, 2017 (speaker)
  • “Taking Offense: Supreme Court Strikes Lanham Act’s Prohibition of ‘Disparaging’ Trademarks,” V&E IP Insights, June 28, 2017 (co-author)
  • “An Intro to The Defend Trade Secrets Act,” May 11, 2017 (presenter)
  • “Supreme Court Finds Patent Law Exhausting,” V&E IP Insights E-communication, May 30, 2017 (co-author)
  • “Hunting Pirates at the ITC: A Cost-Effective Approach to Brand Protection,” Intellectual Property CLE Series, V&E New York Office, May 9, 2017 (speaker)
  • “NPE Licensee Now, Reluctant ITC Discovery Participant Later: Satisfying Domestic Industry Activity Through Licensees,” V&E High-Tech Law & Litigation E-communication, April 19, 2017 (co-author)
  • “Buyer Beware: How Violation of a Consent Order Resulted in a $6.2 Million Penalty,” V&E IP Insights E-communication, April 6, 2017 (co-author)
  • “Innovative Approaches to Protecting IP in the Technology Sector,” UT Law 30th Annual Technology Law Conference, March 25-26, 2017 (speaker)
  • “Yay Team! Supreme Court Declares Cheerleading Uniforms Can Be Copyrighted,” V&E IP Insights E-communication, March 23, 2017 (co-author)
  • “Weighing the Proposed Federal Trade Secrets Law,” Law360, June 23, 2016 (co-author)
  • “Federal Circuit Holds Beauregard Claim Directed at a Mental Process Unpatentable Under 35 U.S.C. § 101,” V&E IP Insights E-communication, August 18, 2011 (co-author)
  • “Software Licenses – Ten Things You Ought to Know,” presented at the University of Houston Health Law Institute, July 2008
  • “Ethical E-Mailing,” presented at South Texas College of Law Real Estate Conference, June 2008
  • “Effective Practice at the ITC,” presented with Judge Paul Luckern of the ITC at the UT 2008 Advanced Patent Law Institute, January 2008
  • “Cybersquatting – Fear and Loathing in Cyberspace,” presented at VE CLE, November 2007
  • “IP Disputes in the U.S. International Trade Commission,” presented to a Chinese trade delegation at VE, November 2007
  • “Indirect Infringement,” presented at UT 20th Annual Advanced Patent Law Institute, October 2007
  • “Common Copyright Pitfalls and Avoiding Them,” presented at TSAE Annual Conference, September 2007
  • “Software Licenses – Ten Things You Ought to Know,” presented at the University of Houston Health Law Institute, July 2007
  • “Intellectual Property Basics,” presented to Association of Corporate Counsel, June 2007
  • “Digital Rights Management,” presented at the Greater Dallas Chamber’s CIO/CTO Forum, September 2006
  • “Standards Setting and Your IP,” presented with Anthony Peterman of Dell at the UT 19th Annual Computer Law Conference, June 2006
  • “IP Basics for Deals,” presented at the Annual Texas State Bar Corporate Section Meeting, June 2006
  • “An Overview of the Madrid Protocol,” V&E Continuing Legal Education Program, November 2002 (presenter)
  • “The New Federal Cybersquatting Laws,” 8 Tex. Intell. Prop. L. J. 265, 2000
  • Legal Aspects of Engineering (5th ed. 1993)(co-authored)
  • “A General Overview of Trade Secrets — Texas Style,” 53 Tex. B. J. 725, 1990
  • “The Adoption of the Uniform Trade Secrets Act: How Uniform is Uniform?,” 27 J. L. & Tech. 73, 1987