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 law.

She employs a mix of patent, copyright and trade secret protection to design intellectual property strategies that align with her clients' business goals. Theresa routinely advises clients on technology and intellectual property matters that arise in business transactions. She reviews, analyzes and negotiates agreements that directly and tangentially affect all types of intellectual property rights, including licenses and sales of patents, trademarks, copyrights and trade secrets. Theresa also regularly advises clients on information technology and transactions, including agreements regarding standard software licensing, software-as-a-service, cloud hosting and technology development. She also conducts due diligence to facilitate the transfer of intellectual property rights, including as part of mergers and larger acquisitions.

Theresa practices all aspects patent law, including patent litigation and the preparation and prosecution of utility and design patent applications. In patent prosecution, Theresa strategically maximizes the strength of her clients’ portfolios to help them meet their legal and business goals. She has actively represented her clients in litigation before the U.S. district courts and the U.S. International Trade Commission. Theresa also has experience challenging patentability at the U.S. Patent and Trademark Office, including reexamination and post-grant proceedings before the Patent Trial and Appeal Board. Theresa’s experience handling complex patent litigation issues includes developing claim construction, infringement and invalidity strategies; taking and defending depositions; coordinating expert testimony; and handling pre- and post-trial briefings. In addition, she has successfully coordinated ongoing patent litigation with related patentability challenges before the U.S. Patent and Trademark Office.

Her technical experience includes all aspects of electrical and computer technologies, including software and mobile applications, automotive systems, control systems, robotics, communication systems, networking, cloud computing, cryptography and wireless technologies. Her technical experience also includes apparel, mechanical equipment, residential and commercial appliances, and consumer products.

Select Experience

  • 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.
  • Developed patent portfolio for vision-based adaptive control systems for automobiles.
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Experience

  • 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.
  • Developed patent portfolio for vision-based adaptive control systems for automobiles.
  • Defended an automotive company in multiple patent infringement lawsuits in the Eastern District of Texas involving automotive technologies and primary electronic systems.
  • 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 a German multinational engineering and electronics company in the defense of multiple patent infringement lawsuits related to various automotive 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.
  • Managed the intellectual property assets of a multimillion-dollar asset acquisition.
  • Managed an international patent portfolio for a range of baby products.

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® (2021)
    • “Ones to Watch” Georgia: Intellectual Property Law

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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Data Counsel
Accelerate: Getting to Your North Star Faster
By Chad A. Rutkowski, Theresa M. Weisenberger
June 2, 2020
In May, BakerHostetler’s new Digital Transformation and Data Economy (DTDE) team presented a four-part webinar series for business leaders that covered the legal implications surrounding COVID-19. Panelists, including in-house attorneys...
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Data Counsel
How to Pivot and Transform Your Digital Assets into Alternate Revenue Streams
By Janine Anthony Bowen, Theresa M. Weisenberger
June 1, 2020
BakerHostetler’s new Digital Transformation and Data Economy (DTDE) Team presented a four-part webinar series in May that covered the legal implications surrounding COVID-19 for business leaders. Panelists, including in-house attorneys and...
Read More ->