Crain Caton & James

Overview

Bill has advised Fortune 100 companies to VC funded start-ups on complex intellectual property (IP) issues for more than twenty-five years. His clients represent a broad spectrum of industries including energy, construction, telecommunications, e-commerce, and software. Through his work with general counsel and IP counsel in these industries, Bill has gained a deep understanding of the related technology, particularly software used in the oil and gas industry.

Bill has represented litigants in patent litigation related to software and mechanical devices, trademark and unfair competition litigation, and copyright litigation before numerous federal district courts, the Federal Circuit Court of Appeals, the Fifth Circuit Court of Appeals, and the Tenth Circuit Court of Appeals. Bill has also worked closely with both local and FBI law enforcement agencies in matters related to trade secret theft under the Economic Espionage Act.

Bill has handled numerous matters before the US Patent and Trademark Office (PTO), which include the filing and prosecution of patent and trademark applications and related appeals before the Patent Trial and Appeal Board and the Trademark Trial and Appeal Board.

Bill has worked closely with foreign associates to develop and manage worldwide patent and trademark portfolios for clients that strengthen their market position. In addition, he regularly assists clients with leveraging and monetizing their IP through the sale and licensing of their technologies. He has prepared numerous patentability and trademark clearance opinions, and has assisted clients in evaluating patent infringement by rendering invalidity and non-infringement opinions.

Bill also enjoys golf, tennis and traveling.

Experience

Patent Litigation

• Represented In-Depth against patent infringement and Lanham act claims; see: https://craincaton.com/crain-caton-james-represents-in-depth-in-legal-vindication/
• Represented Landmark Graphics in patent suit for infringement of software patents covering seismic data processing
• Retained after final judgment to represent Sorkin in an appeal to the Federal Circuit
• Represented Mr. Tucek in suit for infringement of patents dealing with mechanical devices
• Defended Novo Industries in a suit for patent infringement that was decided by summary judgment for Novo and affirmed by the Federal Circuit
• Defended Pharmacia & Upjohn in a patent royalty dispute, which was won on summary judgment by Pharmacia & Upjohn and affirmed by the 10th Circuit
• Represented GAIA in a complex multiforum litigation involving patent ownership, infringement (patent and trademark) and theft of trade secrets
• Represented Fairfield Industries in suit alleging infringement of patents covering nodal transmission of seismic data
• Represented Mr. Hor in suit for correction of inventorship of patent covering superconductivity

Trademark Litigation

• Represented A2D and Riley in suit for trademark infringement, tortious interference, and breach of contract based on well logs sold by defendants
• Defended Founders in a trademark infringement dispute
• Represented Bechtel in the United States Patent and Trademark Office before The Trademark Trial and Appeal Board in opposition proceedings
• Represented Baker Hughes in the United States Patent and Trademark Office before The Trademark Trial and Appeal Board in opposition proceedings
• Defended Maple Leaf Homes in a copyright infringement and Lanham Act case involving architectural plans
• Defended USA Healthnet, Inc. in a trademark and Lanham Act dispute

Copyright Litigation

• Defended Nissun Cap in a copyright infringement and unfair competition dispute
• Defended Hughes Christensen in a copyright infringement and unfair competition dispute
• Defended Burke Read against allegations of copyright infringement for a design used on commercial products

Trade Secret Litigation

• Represented Traver Technologies in a theft of trade secrets suit filed against former employees

Prosecution – Transactions

• Represented Bechtel in a patent prosecution for a Low Energy Ejector Desalination System (LEEDS) for which Bechtel was honored by the Houston Intellectual Property Law Association (HIPLA) 2022 inventors of the year for their contributions; see https://craincaton.com/our-client-bechtel-honored-by-the-houston-intellectual-property-law-association-hipla/
• Represented Magic Earth, Inc. in negotiating the transfer of all rights related to Texaco’s GeoProbe® software technology to Magic Earth
• Responsible for all domestic and international licensing and transactional matters for Magic Earth as its acting general counsel between 1999 and 2004
• Represented Magic Earth, Inc. in negotiating the sale of Magic Earth stock worth $100MM to Halliburton Company in 2001
• Represented Halliburton Company in the development of a worldwide patent portfolio
• Represented Shell Oil Company in the development of a domestic patent portfolio

Affiliations

• American Intellectual Property Association: Licensing, Patent Litigation and Electronic Computer Law Sections
• Houston Intellectual Property Law Association
• Houston Bar Association

Community & Civic

• Houston Volunteer Lawyers
• Houston Food Bank
• Texas A&M Legacy Society
• Texas A&M 12th Man Foundation
• Houston Zoo, Flock Patron
• Spring Branch ISD mentor, 2016-2020
• Spring Branch ISD, Long Range Facilities Planning Committee, 2017
• Spring Branch ISD (WAIS), Campus Improvement Team, 2016-2017
• Spring Branch ISD Bond Oversight Committee, 2017-present
• Spring Branch Memorial Sports Association, Volunteer/Coach
• Chapelwood United Methodist Church Finance Committee, 2019-present
• Cornerstone Family Ministries Board, 2020-2022

Honors & Awards

• Best Lawyers in America – Litigation-Patent, BL Rankings, 2024-2025
• Texas Super Lawyers – Intellectual Property, Thomson Reuters, 2022-2024
• Top-Rated Lawyer, The American Registry, 2022
• Top Lawyer – Intellectual Property Rights, Houstonia Magazine, 2016
• Who’s Who in American Law
• Outstanding Young Men in America, 1989

Publications & Presentations

• Texas A&M University MBA/Law Symposium, presenter
• Intellectual Property Primer, presenter, Bechtel Corporation
• Intellectual Property Workshop, presenter, Landmark Graphics Corporation
• Intellectual Property Workshop, presenter, Bechtel Corporation
• Energy Software Developers Need to Protect Their ‘Gold’, author, Houston Business Journal
• How to Stake a Claim to Your Intellectual Property, author, First Break, 2001
• How to Stake a Claim to your Intellectual Property, author, The Leading Edge, 2001
• Lessor and Lessee Liability Under the Comprehensive Environmental Response, Compensation, and Liability Act (CERCLA): The Catch-22 of Lease Agreements, South Texas Law Review, 1991
• Lessor and Lessee Liability Under the Comprehensive Environmental Response, Compensation, and Liability Act (CERCLA): The Catch-22 of Lease Agreements, State Bar of Texas Environmental Law Journal, 1991