Jump to Navigation

Jeffrey S. Whittle

Whittle, Jeffrey S.

Partner

P +1.713.221.1185
F +1.713.221.2141
jeffrey.whittle@bgllp.com

Assistant

Carol Mathis
+1.713.221.3369

Jeffrey Whittle serves as the Head of the Technology Law Section of Bracewell & Giuliani. He has experience representing clients in various technology-based transactions, including licenses, agreements for technology development, transfer, acquisition, joint development, product development, strategic alliance, collaboration, and product distribution, as well as various other intellectual property agreements in the software, e-commerce, energy, telecommunications, mechanical/electrical, financial, 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. Mr. Whittle is a frequent speaker and author nationally and internationally.

View Detailed Description »

Representative Matters

Represented Kinder Morgan, Inc. (KMI) as the intellectual property lead attorney advising on IT systems licensing and infrastructure issues, patent, trademark, and trade secret licensing issues, Federal Trade Commission ordered asset and intellectual property divesture and related licensing issues, and intellectual property diligence/title issues in KMI's $3.3 billion deal selling 7,200 miles of pipelines and two natural-gas processing facilities.

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

"The role of education in technology commercialization," IAM Magazine, July 2014

"It's Now Much Easier To Get A Priority Patent Filing Date," Law 360, November 5, 2013.

"Calculating Reasonable Royalty Damages in the Changing World of Patent Litigation in the United States," Inside the Minds: The Impact of Recent Patent Law Cases and Developments (107-124). Eagan, MN: Thomson Reuters/Aspatore, 2013.

"Lame-Duck Patent Reform Goes Almost Entirely Unnoticed," Law360, December 2012.

"Contracts for Technology Commercialization," Licensing Executives Society Mexico, Guadalajara and Mexico City, November 2012.

"Federal Circuit Passes Torch from Juries to Judges for Willful Infringement Determinations," IP Links, November 2012.

"IP & Licensing Basics: A One-Day Review," Licensing Executives Society Houston Chapter, September 2012.

"Patenting, Due Diligence and Licensing," Licensing Executives Society University, Strategic Licensing: Advanced Skills & Tools, July 2012.

"Federal Circuit Clears Pathway Through 'Recapture Rule' Minefield," Thomson Reuters News & Insight, June 2012.

“IP & Licensing Basics,” Licensing Executives Society Los Angeles Chapter, June 2012.

“Train-the-Trainer: IP & Licensing Basics Instructor Qualification Workshop,” Licensing Executives Society Spring Meeting, May 2012.

“Effects of Patent Reform on Licensing and Acquisitions,” Licensing Executives Society Seattle Chapter, April 2012.

"'Round the Turn They're A-Comin'! The Wild Patent Enforcement Ride of Marine Polymer v. HemCon," Thomson Reuters, April 2012.

“Innovators Take Note, ‘Imitation Two-Year Provisional’ Option Extended Through 2012,” Intellectual Property Today, April 2012.

“Mining and Energy Infrastructure Licensing Strategies,” Law Executives Society International Annual Conference, Auckland, New Zealand, April 2012.

“IP & Licensing Basics: A One-Day Review,” Licensing Executives Society Houston Chapter, February 2012.

"Business Aspects of Patent Reform," Licensing Executives Society, February 2012.

"Can We Talk?  Doing So Significantly Increases Early Allowance of Patent Applications," IP Strategist, January 2012.

"Federal Circuit Upholds ITC's 'Bao Gong' Authority for International Trade Secret Misappropriation," Corporate Counsel Section of the State Bar of Texas Winter Newsletter, January 2012.

“Expansion of Priority Examination Program for Patent Applications Now Available," Bloomberg Intellectual Property Law Report, February 2012.

"Domestic Industries Have More Power to Protect Trade Secrets Globally," National Law Journal, December 12, 2011.

"Train-the-Trainer IP & Licensing Basics: Instructor Qualification Workshop" Licensing Executives Society Annual Meeting, San Diego, October 2011.

"Commercializing Technology Through the Power of Intellectual Property Licensing," LESI 2011 Annual Conference, London, June 7, 2011.

"Managing Risk for Intellectual Property Commercialization," LESI PDS 100 Course, London, June 5, 2011.

"Kappos Opts for Fast Track Examination Over 3-Track – for Now," IPfrontline.com, March 2011.

"Bilski Decision Keeps Economic Engines Humming for Future Innovation," NC Bar Association newsletter, November 2010.

"Forest Group v. Bon Tool Co.: The Effect on Licensing of Patents," les Nouvelles, September 2010.

"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.

"Bilski: What Next for Life Sciences" Managing IP, June 2010.

"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.

"PDS 200 - Essential Principles and Tools of Licensing," Licensing Executives Society International 2009 Annual Conference, Mexico City, Mexico, October 7, 2009.

"PDS 100 - Commercializing Technology Through the Power of IP Licensing," Licensing Executives Society International 2009 Annual Conference, Mexico City, Mexico, October 6, 2009.

"Strategic IP Investment In Core Business Is Key, Despite Economy," In-House Texas, August 3, 2009.

"Land Rush in Cyberspace: ICANN’s Proposed Game-Changer and Its Impact on Trademark Rights," Bloomberg Technology Law, July 27, 2009.

"PDS 100 - Commercializing Technology Through the Power of IP Licensing," Licensing Executives Society (US and Canada) 2009 Spring Meeting, Montreal, Quebec, Canada, May 6, 2009.

"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. 

"Commercializing Technology through the Power of IP Licensing," World's Best Technologies Showcase, Arlington, Texas, March 23, 2009.

"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.

"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., Electrical Engineering, Vanderbilt University, 1984

Bar Admissions

Texas
New York
Florida
North Carolina
U.S. Patent and Trademark Office

Court Admissions

U.S. Supreme Court
U.S. Courts of Appeals for the 4th, 5th, 11th and Federal Circuits
U.S. District Court for the Southern and Eastern Districts of Texas
U.S. District Court for the Middle District of Florida
U.S. District Court for the Eastern, Middle and Western Districts of North Carolina

Certifications

Certified Licensing Professional

Affiliations

Licensing Executives Society
American Intellectual Property Law Association
Federal Circuit Bar Association
Houston Intellectual Property Law Association
Institute for Electronic and Electrical Engineers
State Bar of Texas
Texas Bar Foundation, Life Fellow
Florida Bar Association
North Carolina Bar Association
Houston Bar Association
The College of the State Bar of Texas

Noteworthy

Chambers & Partners, Chambers USA, Intellectual Property, 2010-2014
Globe Business Publishing Ltd, IAM Patent 1000, 2012-2014
IAM Licensing 250, The World's Leading Patent & Technology Licensing Lawyers, 2011
Legalease, The Legal 500 United States, Intellectual Property (IP): Patent Prosecution: Utility and Design Patents, 2011-2014; Technology: Transactions, 2012-2014
Licensing Executives Society International, Education Committee, Chair, 2012-present
Licensing Executives Society USA & Canada; Vice President for Education, 2012-present; Trustee 2010-present; International Delegate 2009-present; Educational Trainer, 2009-present
Licensing Executives Society, Houston Chapter President, 2007-2008
M.D. Anderson Cancer Center, Technology Review Committee, 2008-2009
IPLaw 360 Advisory Board, 2010
Wake Forest University School of Law, Board of Visitors, 2013-2016