Theresa M. Weisenberger

She | Her | Hers

Partner

Atlanta
T +1.404.256.6689
F +1.404.459.5734

Overview

Theresa Weisenberger is an intellectual property and technology lawyer who focuses on patent and copyright law in the fields of electrical engineering and computer science. Drawing on her decade of experience in intellectual property litigation, technology transactions, copyright registration and patent prosecution, she represents both established technology companies and those companies undergoing a digital transformation at every stage of the intellectual property life cycle.

Theresa develops and executes intellectual property strategies that align with clients’ business goals. Her work includes establishing intellectual property programs for clients whose technology assets have taken on a larger role in their businesses. She educates technologists on the importance of intellectual property protection and guides them through the procedures for obtaining it.

Theresa negotiates and advises clients on technology transactions, including standard software licensing, open-source licensing, software-as-a-service, cloud hosting and technology development. She also manages due diligence to facilitate the transfer of IP rights, including as part of mergers and larger acquisitions.

Theresa advocates for clients in disputes over intellectual property rights, including high-stakes litigation and alternative dispute resolution. She successfully represents clients in federal courts, before the U.S. International Trade Commission, and before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office. She has particular experience coordinating strategies for larger disputes across these forums and regularly collaborates with foreign counsel to align strategies for related disputes in international forums.

Select Experience

Digital Transformation

  • Designed and integrated an IP capture and copyright registration program into a company’s software development workflow.

Technology Transactions and Licensing

  • Advised clients on open source license compliance.

Litigation and Dispute Resolution

  • 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. Variable Speed Wind Turbine Generators, ITC Inv. 337-TA-1218.

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Experience

Digital Transformation

  • Designed and integrated an IP capture and copyright registration program into a company’s software development workflow.
  • Established IP capture and training protocols for a public utility company as part of a secondment.
  • 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.

Technology Transactions and Licensing

  • Advised clients on open source license compliance.
  • Negotiated and drafted hundreds of technology development and licensing agreements.
  • Developed an agreement framework to address the unique challenges that arise in Agile development.
  • Implemented dual licensing models that facilitated both proprietary and open source licensing.
  • Drafted application programming interface (API) agreements to facilitate interoperability of disparate software programs and data exchange.
  • Authored the Lexis Practical Guidance on API licensing.

Litigation and Dispute Resolution

  • 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. Variable Speed Wind Turbine Generators, ITC Inv. 337-TA-1218.
  • Defended client in ITC investigation involving computer-controlled radio-pharmaceutical infusion systems, where all asserted claims were declared obvious over prior art. Strontium-Rubidium Radioisotope Infusion Sys., ITC Inv. 337-TA-1100.
  • 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, district court action and PTAB proceedings.
  • Represented a client in a trade secret and patent dispute before the Japan Commercial Arbitration Association (JCAA).
  • Defended a multinational electronics conglomerate in multiple patent infringement lawsuits in the Eastern District of Texas involving electronic and mechanical technologies.
  • 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. Digital Media Devices, ITC Inv. 337-TA-882

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

  • U.S. Copyright Society of America
  • American Bar Association
  • 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...
Read More ->