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Haynes and Boone, LLP

(John) Russell Emerson

(John) Russell Emerson

Partner

Haynes and Boone, LLP
Texas, U.S.A.

tel: +1 214 651 5328
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Russ Emerson is an experienced litigator and first-chair trial lawyer who has served as lead counsel in scores of patent infringement and other intellectual property cases in Texas and across the country. His cases have involved a wide variety of technologies, from semiconductors to lasers, medical devices to pharmaceutical products, and drilling technology to information theory.

A former naval officer, Russ leads litigation and trial teams sized to effectively and efficiently accomplish his clients’ goals. As a registered patent lawyer with a degree in mechanical engineering and experience in nuclear engineering, Russ combines fluency with technology with the ability to explain that technology to judges and juries alike.

Russ prides himself in creatively and aggressively defending his clients’ interests. For example:

When client Electronic Transactions Consultants (“ETC”) won a major contract from its much larger competitor TransCore, TransCore sued ETC for patent infringement. Because TransCore had settled an earlier suit against ETC’s equipment supplier by granting the supplier a covenant not to sue, Russ focused ETC’s defense on patent exhaustion arising from the covenant. The district court granted ETC a summary judgment, which Russ defended at the Federal Circuit. The appeals court affirmed, holding for the first time that "an unconditional covenant not to sue authorizes sales by the covenantee for purposes of patent exhaustion." TransCore, LP v. Elec. Transaction Consultants Corp., 563 F.3d 1271, 1274 (Fed.Cir.2009). The TransCore decision has been cited over 100 times by other courts.

More recently, Russ defended Complus Data Innovations against patent infringement claims brought in the Eastern District of Texas. Seeing that the claims were without merit, Russ immediately moved for summary judgment of non-infringement. When the court failed to rule on the motion and the plaintiff refused to dismiss its suit, Complus and its co-defendants moved for sanctions under Rule 11. The district court eventually granted summary judgment but declined to sanction the plaintiff, so the defendants appealed. Arguing for Complus, Russ helped convince the Federal Circuit to reverse the district court’s denial of sanctions—the first time the Federal Circuit ever reversed a district court’s denial of Rule 11 sanctions. Read the Complus decision and articles about the case from Law.com and Texas Lawyer.

In 2013, the IP Navigation-affiliated non-practicing entity Parallel Iron sued San Antonio-based Rackspace for patent infringement in Delaware. But Parallel Iron sued on patents that IP Nav had earlier asserted against Rackspace under the terms of a “Forbearance Agreement.” Because Parallel Iron violated that agreement when it sued Rackspace, Russ sued IP Nav and Parallel Iron in San Antonio for a declaratory judgment of non-infringement and breach of contract. Rackspace soon settled on favorable terms. Read about the case and related coverage.

Russ also handles cases involving trademarks and trade dress, copyrights, theft of trade secrets, and other complex technical matters. In addition to his trial court practice, Russ has successfully argued a number of appeals before the Federal Circuit. Russ is also active at the Patent Trial and Appeal Board, having participated in more than 50 inter partes review proceedings. Before attending law school, Russ served as a division officer on board a nuclear-powered, fast-attack submarine and was certified as a Naval Nuclear Engineer by the Department of Energy's Naval Reactors Division.

Education

J.D., The University of Texas, 1997, with honors; Moot Court, mock trial; Texas Intellectual Property Law Journal
B.S., Mechanical Engineering University of Florida, 1988, with high honors
Areas of Practice
Professional Career

Significant Accomplishments

Currently defending maker of WAN-optimization products against patent-infringement claims relating to data-compression technology (E.D. Tex., PTAB).

Defended start-up against claims of patent infringement, trade-secret misappropriation, and trademark infringement in case relating to laser technology (N.D. Texas).

Defended oil-and-gas operating company in patent-infringement case relating to multi-pad horizontal drilling. Case settled for no payment (E.D. Tex.).

Won complete jury verdict as lead trial counsel for patent owner in validity-only trial involving CMOS image sensors (D. Del.).

Successfully represented defendants - national marketing services and event demonstrations providers - in a patent-infringement lawsuit involving method patents directed at clients’ key services. Litigation settled on favorable terms (C.D. Cal.).

Obtained a jury verdict and judgment, including enhanced damages, attorneys’ fees, and a broad injunction, for the willful infringement of a patented method for surgically repairing the left ventricle of the human heart after a severe heart attack (N.D. Tex.).

Obtained a final, non-appealable, take-nothing judgment against Data Treasury after a multi-week jury trial in Marshall, Texas in a lawsuit involving electronic check-image processing (E.D. Tex.).

Won summary judgment of non-infringement for Prodigy and SBC Internet Services in case involving dial-up internet-access technology (E.D. Tex.).

Won summary judgment of invalidity in case relating to air-conditioning technology (E.D. Texas). Successfully defended judgment on appeal to Federal Circuit.

/Won judgment on the pleadings of non-infringement for Southwestern Bell Communications Services, Inc. in case relating to devices for installing fiber-optic cable. Case settled favorably for remaining SBC defendants (D. Del.).

WSG's members are independent firms and are not affiliated in the joint practice of professional services. Each member exercises its own individual judgments on all client matters.

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