Jeffrey S. Whittle
Partner
Carol Mathis
713.223.2300 x2867
Jeffrey Whittle has experience representing clients in various technology-based transactions, including licenses, agreements for technology development, transfer, acquisition, joint development, collaboration, product development, strategic alliance, collaboration, and product distribution, as well as various other intellectual property agreements in the software, telecommunications, mechanical/electrical, e-commerce, financial, energy and medical industries.
Mr. Whittle also has experience representing clients in various patent, trademark, copyright and other intellectual property matters, including patent, trademark and copyright preparation and prosecution, mergers and acquisitions, due diligence investigations and opinions, strategic planning, portfolio analysis, various types of intellectual property, litigation and client counseling.
Representative Matters
Represented a power company in a multi-billion dollar transaction regarding intellectual property rights pertaining to operational agreements for plant construction and operation of power plants.
Represented a multinational veterinary pharmaceutical company in a multi-million dollar transaction regarding intellectual property rights pertaining to the sale of a business unit.
Represented an e-commerce company in a multi-million dollar transaction regarding intellectual property rights pertaining to patent infringement defense related to business method patents.
Represented a travel services company in a $135 million transaction regarding intellectual property rights pertaining to acquisition financing of another travel services company.
Represented a software company in a multi-million dollar transaction regarding intellectual property rights pertaining to a strategic alliance agreement for quality assurance software and maintenance/support.
Represented an e-commerce company regarding intellectual property rights pertaining to the marketing of streaming technology within the travel industry and media and advertising, reselling/distribution, and partner syndication agreements.
Represented a major energy infrastructure company regarding intellectual property rights pertaining to joint development of technology relating to environmental cleanup.
Represented a beverage company in a multi-million dollar transaction regarding intellectual property rights pertaining to the sales of beverage assets.
Publications and Speeches
Co-author, "Ready to Buy - Before Signing Off on a Software License Agreement, Make Sure You Address a Few Crucial Legal Issues," BizTech Magazine, August 20, 2010.
Co-author, "Rescission Sweeps Away Controversial Patent Rules," Executive Counsel, April/May 2010.
"Essential Principles & Tools of Licensing," LES Professional Development Series PDS200, San Francisco, March 1-4, 2010.
"Strategic IP Investment In Core Business Is Key, Despite Economy," In-House Texas, August 3, 2009.
Co-author, "Land Rush in Cyberspace: ICANN’s Proposed Game-Changer and Its Impact on Trademark Rights," Bloomberg Technology Law, July 27, 2009.
Co-speaker, "Living with the Deal," Licensing Executives Society USA & Canada, Professional Development Series - PDS 200: Essential Principles & Tools of Licensing, San Francisco, California, March 26, 2009.
Co-speaker, "Commercializing Technology through the Power of IP Licensing," World's Best Technologies Showcase, Arlington, Texas, March 23, 2009.
Co-speaker, "Telemedicine as a Mainstream Paradigm for Health Care Delivery," Licensing Executives Society USA & Canada Winter Meeting, San Antonio, Texas, February 26, 2009.
"We Get the Message! Business Method Patents After In re Bilski," LexisNexis, Martindale-Hubbell Legal Articles, December 2, 2008.
"Bucking the Anti-Patentee Trend, the Federal Circuit Adjusts the Anticipation Rule in the Patentee’s Favor," LexisNexis, Martindale-Hubbell Legal Articles, December 2, 2008, and reprinted with permission by Environmental Counselor, 2009.
Speaker, "Deal Or No Deal: Is There a Third Choice?," Association of University Technology Managers (AUTM) Central Region Conference, Cleveland, OH, July 2008.
"Bracewell & Giuliani Highlight Key IP Considerations for Doing Business in North America," Pipeline, Venture Business Research, February 4, 2008.
Education
J.D., Wake Forest University School of Law, 1991
M.B.A., Wake Forest University, 1991
B.S.E.E., Vanderbilt University, 1984
Bar Admissions
Texas
U.S. Patent and Trademark Office
North Carolina
Florida
Court Admissions
U.S. District Court for the Northern, Southern, Eastern and Western Districts of Texas
U.S. Supreme Court
U.S. Courts of Appeals for the 4th, 5th, 11th and Federal Circuits
U.S. District Court for the Middle District of Florida
U.S. District Court for the Eastern, Middle and Western District of North Carolina
Affiliations
Certified Licensing Professional
Licensing Executives Society
American Intellectual Property Law Association
Federal Circuit Bar Association
Houston Intellectual Property Law Association
Institute for Electronic and Electrical Engineers
Texas Bar Association
Florida Bar Association
North Carolina Bar Association
Houston Bar Association
Noteworthy
Chambers USA: America's Leading Lawyers for Business, Intellectual Property, 2010
M.D. Anderson Cancer Center, Technology Review Committee, 2008-2009
Licensing Executives Society USA & Canada, International Delegate; Educational Trainer, 2009
Licensing Executives Society, Houston Chapter President, 2007-2008