Theresa M. Weisenberger

She | Her | Hers

Partner

Atlanta
T +1.404.256.6689
F +1.404.459.5734

Overview

Theresa Weisenberger focuses her practice on the intersection of technology, business and the law, and regularly advises technology clients on various aspects of intellectual property (IP) law. She employs a mix of patent, copyright and trade secret protection to design IP strategies tailored to her clients’ business goals. She guides clients through every stage of IP strategy, from creation and capture to operationalization and monetization and, when necessary, IP dispute resolution.

Theresa negotiates agreements that directly and tangentially affect all types of IP and data rights. She advises clients on technology transactions, including standard software licensing, software-as-a-service, cloud hosting and technology development. She also conducts due diligence to facilitate the transfer of IP rights, including as part of mergers and larger acquisitions.

Theresa practices all aspects patent law, including patent litigation and patent prosecution. She has actively represented her clients before the U.S. district courts and the U.S. International Trade Commission and successfully challenged patentability before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office. Theresa combines her patent law background with her transactional experience to optimize the value and utility of IP for her clients.

Select Experience

  • Defended client in ITC investigation involving controls for wind turbine generators. Developed and executed technical defense that enabled client to remain in U.S. market notwithstanding violation by obsoleted controls.
  • Seconded to a large client to establish an intellectual property program.
  • Negotiated a complex series of interrelated agreements covering licensing of pre-existing technology and custom development of related technology covering AI, data analytics and infrastructure software.

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Experience

  • Defended client in ITC investigation involving controls for wind turbine generators. Developed and executed technical defense that enabled client to remain in U.S. market notwithstanding violation by obsoleted controls.
  • Seconded to a large client to establish an intellectual property program.
  • Negotiated a complex series of interrelated agreements covering licensing of pre-existing technology and custom development of related technology covering AI, data analytics and infrastructure software.
  • Defended a multinational electronic conglomerate in multiple patent infringement lawsuits in the Eastern District of Texas involving electronic and mechanical technologies, as well as in arbitration issues before the Japan Commercial Arbitration Association (JCAA).
  • Represented multinational clients in the defense of multiple patent infringement lawsuits related to various automotive technologies, primary electronic systems, renewable energy, consumer electronics and semiconductor technology.
  • Coordinated multinational proceedings regarding patent infringement dispute that involved multiple foreign proceedings across Europe, an ITC action and PTAB proceedings.
  • Represented a multinational electronics company in an ITC action involving mobile devices and home entertainment devices. Following trial, all four asserted patents were found not infringed and/or invalid.

Recognitions and Memberships

Recognitions

  • The Legal 500 United States (2021)
    • Recommended in Intellectual Property - Patents: prosecution (including re-examination and post-grant proceedings)
  • The Best Lawyers in America® 
    • “Ones to Watch” Georgia: Intellectual Property Law (2021 to 2023)
    • “Ones to Watch” Georgia: Litigation - Intellectual Property (2022 to 2023)
    • “Ones to Watch” Georgia: Technology Law (2022 to 2023)

Memberships

  • American Bar Association (2011 to 2016)
  • U.S. Copyright Society of America
  • State Bar of Georgia
  • Intellectual Property Owners Association, Post-Grant Patent Office Practice Committee (2014 to 2016)
  • American Intellectual Property Law Association (2011 to 2014)

Community

  • Global Women, Inc.: Executive Board of Directors (2015 to 2017)

Pro Bono

  • Represents an internationally recognized nonprofit dedicated to obtaining and preserving civil rights by protecting their legacy in business transactions and public events. 
  • Represented appellants before the U.S. Court of Appeals for Veterans Claims.
  • Represented a plaintiff in a Section 1983 litigation against a jail where the plaintiff was incarcerated.

Prior Positions

  • NASA at Marshall Space Flight Center, EI 51: Intern

Admissions

  • U.S. Court of Appeals, Federal Circuit
  • U.S. District Court, Northern District of Georgia
  • U.S. District Court, Eastern District of Texas
  • U.S. Patent and Trademark Office, Registration No. 65,559
  • Georgia

Education

  • J.D., Vanderbilt University Law School, 2011; Articles Editor, Journal of Entertainment and Technology Law; Dean's Scholar; Phi Delta Phi; Mock Trial Quarterfinalist; Vanderbilt Scholastic Excellence Award for Patents and Know-How
  • B.S., Electrical Engineering, Mississippi State University, 2008, magna cum laude; Engineering Entrepreneurship Certificate

Blog

In The Blogs

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IP Intelligence: Insight on Intellectual Property
The US Supreme Court Decides Oracle v. Google—The More Things Change, the More They Stay the Same
By Chad A. Rutkowski, Theresa M. Weisenberger
April 5, 2021
The U.S. Supreme Court issued a remarkable opinion in the long-running dispute between Oracle America and Google over Google’s copying of Oracle’s Java SE API for use on the Android platform. BakerHostetler has followed this case for quite...
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Data Counsel
Welcome to the Digital Transformation and Digital Economy Newsletter, January 2021 Issue
By Kyle R. Gregory, Theresa M. Weisenberger
January 12, 2021
Across the economy, businesses are using digital technology to pivot into innovative service lines, accelerate growth and transform their businesses altogether. These businesses’ digital strategies and data assets play important roles in...
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Data Counsel
Welcome to the Pivot. Accelerate. Transform. Newsletter
By Chad A. Rutkowski, Theresa M. Weisenberger
November 30, 2020
Welcome to the inaugural issue of Pivot. Accelerate. Transform., the Digital Transformation and Data Economy team’s newsletter. Across the economy, businesses are using digital technology to pivot into innovative service lines, accelerate...
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