Theresa M. Weisenberger

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

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.