Gilbert A. Greene, PC

Partner

  • Gilbert A. Greene, PC
  • Phone: +1 512 277 2246

    Import to Address Book

  • Duane Morris LLP
    Terrace 7
    2801 Via Fortuna, Suite 200
    Austin, TX 78746-7567
    USA

Bert Greene is managing partner of the firm's Austin office. Mr. Greene's practice is focused on the enforcement and procurement of intellectual property rights, with a primary emphasis on patent litigation. His patent litigation clients have included large and small technology companies, energy and chemical companies, and retailers in cases involving a diverse array of technologies. Mr. Greene also has experience with handling patent validity trials (IPRs/CBMs) before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office. He also has experience with patent prosecution, opinion work, and portfolio management, primarily in the chemical engineering, chemistry and mechanical fields.

Mr. Greene has experience with handling all phases of patent litigation, including written discovery and document production, fact and expert witness depositions, Markman briefings and hearings, dispositive motion briefing and hearings, trials, appeals and mediation/settlement. He has represented both patent holders and accused infringers in numerous federal jurisdictions across the country, including the Western District of Texas, the Eastern District of Texas, the District of Delaware, the Eastern District of Virginia, the Western District of Wisconsin, the Southern District of California, and the Central District of California. Mr. Greene also has experience with handling all phases of patent validity trials before the Patent Trial and Appeal Board of the United States Patent and Trademark Office.

Mr. Greene's litigation clients have included large and small technology companies, energy and chemical companies, and retailers in cases involving a diverse array of technologies, including wired and wireless networking, power-over-ethernet, wireless telecommunication networks, e-commerce systems, geographic information systems, middleware, video security systems, computer graphics, computer hardware, biofuel production, chemical and petrochemical processing, and DNA analysis. In addition to patent litigation, he also has experience with handling all phases of copyright, trademark and trade secret litigation. 

Mr. Greene also has experience with patent prosecution, opinion work, and portfolio management, primarily in the chemical engineering, chemistry, and mechanical fields. In addition to his patent litigation experience, he has handled numerous pro bono cases on behalf of asylum applicants in US immigration court. Mr. Greene also tried over twenty jury trials to verdict as a Deputy Prosecutor for the City of Austin as part of the attorney loan program.

Mr. Greene is a 2004 graduate, with honors, of the University of Texas School of Law, where he was managing editor of the Texas Intellectual Property Law Journal, and earned a B.S., with highest honors, in chemical engineering from the University of Texas at Austin. He served as judicial intern for the Hon. Sam Sparks of the U.S. District Court for the Western District of Texas.

Areas of Practice

  • Intellectual Property Litigation
    • Patents
    • Trademarks
    • Copyrights
    • Trade Secrets
  • Intellectual Property Counseling

Representative Matters

  • Defended an oil field services company in a patent infringement matter in the Western District of Texas; team obtained summary judgment of non-infringement as to all asserted claims.

  • Defended a cybersecurity company in a patent infringement matter in the Western District of Texas.
  • Defended a semiconductor company in multiple patent infringement matters in the Western District of Texas.
  • Represented the subsidiary of a major skincare and cosmetics company in a patent infringement matter in the Southern District of New York.
  • Defended Real Estate Webmasters Inc., a technology and marketing service provider, in a patent infringement matter in the Western District of Texas.
  • Defended Rebilly Inc., a software company, in a patent infringement matter in the Western District of Texas.

  • Defended a major technology company in numerous patent infringement cases in the Eastern District of Texas, the Western District of Wisconsin, and the Northern District of California; technology at issue ranged from wireless networking to e-commerce systems to middleware; team obtained summary judgment of patent invalidity on behalf of the client in one of the cases.

  • Defended one of the world's foremost oil and gas companies in related patent infringement cases in the District of Delaware and Eastern District of Texas; team obtained dismissal of case against that defendant at the pleading stage.

  • Defended a major technology company in numerous patent infringement cases in the Eastern District of Texas and the District of Delaware, as well as in post-issuance proceedings before the Patent Trial and Appeal Board (PTAB); technology at issue ranged from microprocessors to network storage to logistics services; team obtained ruling of patent invalidity from the PTAB in one of the cases.

  • Defended a major retailer in numerous patent infringement cases in the Eastern District of Texas and the Southern District of California; technology at issue ranged from e-commerce systems to video security systems; team obtained summary judgment of patent invalidity on behalf of the client in one of the cases.

  • Defended a networking and communications equipment manufacturer in numerous patent infringement cases in the Eastern District of Texas and the District of Delaware; technology at issue ranged from power-over-ethernet to IP gateways.

  • Defended a mobile phone service provider in a patent infringement case in the Eastern District of Texas that involved wireless telecommunication networks.

  • Defended a small technology company in a patent infringement case in the Central District of California that involved geographic information systems.

  • Represented an industrial design company in a copyright and unfair competition case in the Eastern District of Texas; team secured preliminary injunction on behalf of client.

  • Represented a major food and pet products company in a patent infringement case in the Eastern District of Virginia that involved canine DNA analysis; team obtained a temporary restraining order and preliminary injunction on behalf of client.

Admissions

  • Texas
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Northern District of Texas
  • U.S. District Court for the Western District of Texas
  • U.S. District Court for the Eastern District of Texas
  • U.S. District Court for the Western District of Wisconsin
  • U.S. Patent and Trademark Office (USPTO)

Education

  • University of Texas School of Law, J.D., with honors, 2004
  • University of Texas at Austin, B.S., Chemical Engineering, with highest honors, 1998

Experience

  • Duane Morris LLP
    - Partner, 2017-present
  • Norton Rose Fulbright US LLP
    - Partner, 2013-2017
    - Senior Associate, 2008-2012
    - Associate, 2004-2007

Professional Activities

  • State Bar of Texas
  • Austin Bar Association
  • Austin Intellectual Property Law Association
  • Austin IP Inn of Court

Honors and Awards

  • Named a Best Lawyers "Lawyer of the Year" in Litigation - Intellectual Property, Austin, 2023 and 2024

  • Listed in Best Lawyers in America, 2015-2024

  • Listed in Texas Super Lawyers, 2019 and 2020

  • Listed in Super Lawyers Texas Rising Stars, 2013-2015

Selected Publications

  • "Expert Testimony Is Not Always Necessary to Show Unpatentability in IPRs," Patent Challenges Blog, March 5, 2015

  • Co-author, "PTAB Terminates IPR After Institution for Failure to Identify All Real Parties in Interest," Patent Challenges Blog, February 11, 2015

  • "PTAB Declines to Compel Deposition of Declarant . . . But Warns of Consequences for Not Producing Declarant for Cross-examination," Patent Challenges Blog, September 18, 2014

  • Co-author, "En Banc Federal Circuit Addresses 'Joint Infringement' Standard", Fulbright Briefing, September 5, 2012

  • Co-author, "Eastern District of Texas Addresses E-Discovery in Patent Cases in Local Rules Update," Fulbright Briefing, March 12, 2012

Media Hits

  • Quoted, "As WDTX Gets New Top Judge, Patent Attys Play Wait And See," Law360, November 18, 2022
  • Quoted, "WDTX Patent Cases Fall After New Rules, But Don't Disappear," Law360, September 2, 2022
  • Quoted, "Tesla Move Boosts Already-Electric Austin Legal Market," Reuters.com, October 8, 2021

Selected Speaking Engagements

  • "Nuts and Bolts of Remote Litigation," 25th Annual Advanced Patent Law Institute, Webinar, November 6, 2020
  • "Damages: Recent Developments Offering Opportunities and Indicating Limitations," Advanced Patent Law Institute, Austin, Texas, November 7, 2019
  • "A Refresher on the Defend Trade Secrets Act: What Is It, and What's Happened So Far?," Austin IPLA Meeting, June 2017
  • "A Refresher on the Defend Trade Secrets Act: What Is It, and What's Happened So Far?," American IPLA Spring Meeting, May 18, 2017