Patent Litigation, Federal Circuit & Other IP Appeals, IP Transactions & Licensing, Trade Secret Litigation, Patent Prosecution and Inter Partes Review proceedings, Intellectual Property Strategies
State Bar Admissions:
District of Columbia
U.S. District Court for the Eastern District of Texas
U.S. District Court for the Western District of Texas
U.S. Court of Appeals for the Federal Circuit
U.S. Patent and Trademark Office
Villanova University School of Law, JD
SUNY Binghamton, BS, Physics
Tom Dunham has over 20 years’ experience securing, enforcing and defending Intellectual Property rights in Federal District Court and in appeals before the Federal Circuit and petitions to the U.S. Supreme Court. Tom is also registered to practice before the U.S. Patent & Trademark Office where he has obtained patents for clients and has handled Inter Partes Review proceedings.
In his practice, Tom has handled dozens of complex cases in key Federal courts around the country, including both the Eastern and Western District Courts of Texas, the District of Delaware, the Northern, Central and Southern Districts of California, the Southern District of New York, the District of New Jersey, and the Northern District of Illinois. He has also represented clients in appeals to the Federal Circuit and petitions to the U.S. Supreme Court
Prior to practicing law, Tom was a staff engineer for a major U.S. technology company working on complex, advanced hardware/software systems. His experience in industry and as an engineer gives him unique insight in assisting companies with Intellectual Property matters. More particularly, his knowledge of how companies develop technology and how engineering initiatives fit into overall company strategies enables him to accurately assess IP needs and to develop innovative solutions that complement company objectives.
Outside of the office, Tom enjoys fishing, photography and all things outdoors. Tom is also a licensed pilot and he continues to work on additional ratings.
Representative Innovative Case Resolutions
Obtained dismissal on the pleadings for a major telecommunications company in District Court litigation by asserting an unpatentability challenge against four patents under the Alice doctrine.
Obtained a voluntary dismissal with prejudice from the opposing party for a major computer company following a successful Markman claim construction decision, obviating the need for further litigation.
Obtained a voluntary dismissal with prejudice from a major patent enforcer by demonstrating limited sales of client in relevant technology space.
Obtained a voluntary dismissal with prejudice from the opposing party for a Midwest family-held company based on invalidity arguments presented to opposing counsel.
Successfully asserted a portfolio of patents and trade secrets against a “spinoff” company resulting in the cessation of all operations of the spinoff and return of all IP assets to the client.
Negotiated numerous favorable licenses both inside and outside of mediation processes.
Mr. Dunham has also represented numerous pro bono clients in the IP space. Recently, Mr. Dunham obtained patent protection for an individual inventor on an apparatus to assist parents with their children. Additionally, Mr. Dunham secured a patent for a micro-startup on innovative wireless update technology.