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Christopher A. Shield

Shield, Christopher A.

Associate

P 713.221.1115
F 713.222.3225
chris.shield@bgllp.com

Assistant

Cynthia Tsang
713.223.2300 x2557

Christopher "Chris" Shield is an intellectual property trial lawyer that has experience litigating in the Eastern District of Texas, Southern District of Texas, District of Delaware, Central and Northern Districts of California, and the Southern District of New York. Mr. Shield counsels clients in various aspects of intellectual property law, including patents, trademarks, copyrights, infringement studies and opinions, licensing, patent litigation, intellectual property acquisition, trademark litigation, and related matters. Representative industries include internet technology, website design, online retailing, online gaming, oil and gas exploration, chemical refining, oilfield tools and services, telecommunications, financial services, pharmaceuticals, and medical devices.

Mr. Shield holds a professional engineering license in Texas and California, with an emphasis in mechanical engineering. Prior to attending law school, Mr. Shield worked as an engineering consultant, professional engineer and project manager for more than six years and served as director of construction administration for PageSoutherlandPage, the oldest architectural and engineering firm in Texas.

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Representative Matters

Patent Litigation:

Alcatel-Lucent USA Inc. v. Amazon.com, Inc., et al., 6-09-CV-00422-LED in the U.S. District Court for the Eastern District of Texas – Tyler Division. Lead associate and 2nd chair for Overstock.com in its successful defense of infringement allegations related to three Alcatel-Lucent patents resulting in a finding of non-infringement of all three patents (U.S. Patent Nos. 5,649,131; 5,623,656; and 5,404,507), and invalidity of the one of the asserted patents (U.S. Patent No. 5,649,131) at a jury trial.

LecTec Corporation v. Chattem, Inc., et al., Civil Action No. 5:08-CV-00130-DF in the U.S. District Court for the Eastern District of Texas – Texarkana Division. Lead associate for Chattem, Inc. in a patent suit related to trans-dermal medicated patches (U.S. Patent Nos. 5,536,263 and 5,741,510). Resulted in very favorable settlement for the client on the eve of trial.

Baker Hughes Incorporated and Baker Petrolite Corporation v. Nalco Company, 4:09-CV-01885 in the U.S. District Court for the Southern District of Texas. Lead associate and 2nd Chair for Baker Hughes and Baker Petrolite in a patent infringement litigation against a direct competitor resulting in a preliminary injunction after a two day bench trial that was affirmed by the Federal Circuit.

Clear with Computers (formerly Orion IP, LLC) v. Xerox, et al., 6:07-CV-138-LED, in the U.S. District Court for the Eastern District of Texas – Tyler Division. Lead associate for patent infringement litigation related to U.S. Patent Nos. 5,367,627 and 5,615,342, resulted in very favorable settlement for an online retail client on eve of trial.

Furnace Brook LLC v. Overstock.com Inc., Cause No. 05-CIV-7329, in the U.S. District Court for the Southern District of New York. Lead associate in a patent infringement litigation defending Overstock.com regarding website functionality. Resulted in a summary judgment of non-infringement of asserted patent (U.S. Patent No. 5,721,832) one week before trial that was affirmed by the Federal Circuit.

BTG International, Inc. v. Amazon.com, Inc. et al., 04-1264-SLR in the U.S. District Court for the District of Delaware. Lead associate through discovery, expert discovery and Markman process for patent litigation involving website functionality, resulting in a favorable settlement for online retailer at the close of expert discovery.

Adjustacam LLC v. Amazon.com, Inc. et al., 6:10-CV-329-LED, in the U.S. District Court for the Eastern District of Texas – Tyler Division. Successfully represented multiple online retailers in patent litigation dispute regarding cameras for computers, resulting in early dismissal and favorable settlements for clients after limited discovery.

Actus, LLC v. Discover Financial Services, et al., 2:10-CV-177 in the U.S. District Court for the Eastern District of Texas – Marshall Division. Lead associate for patent litigation resulting in favorable client settlement regarding patents related to online gaming activity and website functionality.

Pressure Systems International, Inc. v. Airgo IP, LLC, 4:08-CV-00245 in the U.S. District Court for the Southern District of Texas. Successfully represented client in inventorship dispute regarding tire pressure systems.

Alexsam, Inc. v. Datastream Card Services Limited, et al., 2-03-CV-337, in the U.S. District Court for the Eastern District of Texas – Marshall Division. Lead associate in patent litigation related to financial services and stored value cards, resulting in settlement for client after favorable Markman ruling.

Trademark Litigation:

Peace & Love Jewelry By Nancy Davis LLC v. Overstock.com, Inc. et al., CV10-0320 RSWL in the U.S. District Court for the Central District of California. Successfully settled trademark and unfair competition dispute favorably for client related to jewelry designs.

Medical Legal Consulting Institute, Inc. v. Compliance Review Services, Inc. et al.¸ H 06-0321 in the U.S. District Court for the Southern District of Texas – Houston Division. Lead associate in trademark enforcement litigation to cease improper use of mark, settled favorably for client at mediation.

Other Commercial Litigation:

Expro Americas LLC v. Boots & Coots International Well Control, Inc., No. 2007-47397 in the 281st Judicial District Court of Harris County, Texas. Lead associate through discovery, expert discovery and trial preparation for theft of trade secret litigation resulting in a jury verdict in favor of our client.

Gulf Stream Marine, Inc. v. Software Architects, Inc., et al., No. 2008-16527 in the 152nd Judicial District Court of Harris County, Texas. Lead associate in breach of contract litigation related to software development project, resulting in favorable settlement for client at mediation.

The Manhattan Life Insurance Company, et al. v. Family Life Corporation, et al., No. 2007-22937 in the 215th Judicial District of Harris County, Texas. Lead associate in a breach of contract litigation, resulting in a favorable settlement for client at mediation.

Copyright Matters:

Lead associate in assisting a software company resolving a copyright ownership dispute with contractor.

Assisted a non-profit with review of copyright issues and development of a copyright policy.

Assisted various clients with copyright issues relating to advertising and website design.

Other Intellectual Property Matters:

Assisted a manufacturing client to obtain key patents for a new process.

Education

J.D., with honors, University of Houston Law Center, 2004
B.S., Mechanical Engineering, Kansas State University, 1994

Bar Admissions

Texas

Court Admissions

U.S. Courts of Appeals for the Fifth and Federal Circuits
U.S. District Court for the Northern, Southern, Eastern, and Western Districts of Texas

Affiliations

Houston Intellectual Property Law Association, Board Member (2008-2009), Secretary (2011-present)
State Bar of Texas
Houston Bar Association
Houston Young Lawyers Foundation
Buffalo Bayou ArtPark, Board Member (2003 – 2011), President (2005-2011)

Noteworthy

Texas Rising Stars, 2009 and 2010
Editor-in-Chief, Houston Journal of International Law