Warner J. Delaune
Partner
Warner Delaune protects clients’ rights when they bring products and services to the market and defends them against infringement claims from others in litigation and in post-grant proceedings before the Patent Trial and Appeal Board. As a patent attorney and IP specialist, he helps clients advance their business interests by pursuing the right IP protection for their needs and developing strategies to maximize their position in the competitive landscape. He is a former mechanical engineer and a registered patent attorney licensed to practice before the United States Patent and Trademark Office. He is fluent in the business and technical language of his clients, whether it involves complex agreements or computer-aided design (CAD) documents.
In addition to patent protection and defense, Warner’s experience offers a full spectrum of intellectual property transactional services including federal trademark and copyright preparation and prosecution, as well as negotiation and drafting of license agreements, structuring joint ventures and other technology transactions, conducting IP due diligence, and handling IP warranties, representations and indemnification issues in mergers and acquisitions. He also has extensive experience in preparing and prosecuting federal trademark and copyright applications, including representation of clients before the Trademark Trial and Appeal Board.
Experience
- Secured international patent protection for a car audio speaker system after a hearing in Munich, Germany, before the European Patent Organization (EPO).
- Institution of an inter partes review (IPR) at the U.S. Patent Trial and Appeal Board against a patent held by a competitor to the client, which caused a favorable settlement of a patent infringement lawsuit against the client.
- Obtained a judicial order protecting a large health care client against intrusive inspections and discovery related to a copyright infringement action brought by a software company.
- Successfully avoided a patent infringement action against a client by challenging the validity of the asserted patent based on other patents in existence prior to the competitor’s filing date.
- Negotiated, drafted and closed a large equity investment in a client’s company by a large publicly traded competitor, which included a broad technology license to the investor in the energy industry.
- Negotiated, drafted and closed an exclusive license agreement for a client’s downhole tool patent to a major oil and gas supplier.
- Resolved trademark opposition proceeding in the U.S. Trademark Trial and Appeal Board leading to a favorable sale of the client’s trademarks to the other party.