About Sean S. Wooden

Sean Wooden helps companies large and small develop strategies to protect their intellectual property and avoid infringing others' intellectual property. He represents clients on deals to acquire rights in intellectual property assets, whether by purchase or license, as well as in intellectual property litigation and prosecution. Often, his assistance includes not just drafting agreements, but helping clients analyze and value intellectual property assets.

Protecting IP assets and creating value

For many of Sean's clients, their intellectual property is a central component of the company's value. Sean advises them on how to best protect that value. Methods may be offensive (suing an infringer, challenging a competitor's patent) or cooperative (signing on new licensees, selling or buying a patent). His familiarity with all possible legal tools allows his clients to choose the best path to meet their commercial goals.

Sean has assisted several clients in identifying lucrative business opportunities involving intellectual property. He has helped clients identify and purchase patent portfolios that later sold for a much higher price. He has found flaws in patents a client was looking to buy, helping the client to negotiate a much lower purchase price than originally contemplated. He has also helped client find third-party funding to sue infringers or otherwise pursue a monetization campaign, addressing the company's concern that infringement litigation would not be cost-effective. In all these ways, Sean uses his knowledge of intellectual property to expand the legal and business possibilities open to his clients.

Sean also has expertise dealing with all types of intellectual property and advising clients on how to implement best-practice policies and procedures that maximize the value and strength of their intellectual property assets.

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Practice Focus

  • Licensing and procurement of patents, trademarks, copyrights, trade secrets and other intellectual property
  • Developing intellectual property monetization and enforcement strategies, particularly for patent infringement
  • Negotiating IP-related portions of merger and acquisition agreements and conducting diligence of acquisition-target IP assets
  • Creating corporate plans and policies to protect a company's IP
  • Providing data privacy, network security and related advice
  • Drafting and negotiating commercial contracts involving technology and IP
  • Advising on export matters including compliance with US Commerce Department regulations

Representative Experience

  • Successfully asserted technology innovator's patent claims against multinational smartphone component supplier.  *
  • Defended upscale American retailer against plaintiff appeal of summary judgment of non-infringement.  *
  • Defended provider of infrastructure communications solutions in patent infringement action before the US District Court for the Northern District of California involving cellular and Wi-Fi technology.  *
  • Defended upscale American retailer in software/business method case before the US District Court for the Eastern District of Texas. Obtained summary judgment of non-infringement.  *
  • Defended online flower delivery service in software business method patent infringement action before the US District Court for the Eastern District of Texas.  *
  • Defended provider of restaurant business intelligence against alleged patent infringement involving point-of-sale reporting system using the Internet.  *
  • Defended provider of IA solutions against two patent counterclaims involving web-based certification and accreditation systems.  *
  • Represented American multinational technology company in three patent counterclaims filed by the client. Also defended against copyright infringement and contract claims arising out of source code contributions to LINUX.  *
  • Represented provider of sterilization management services as plaintiff in patent infringement claim for an irradiation system before the US District Court for the Central District of California.  *
* Experience prior to Katten

Presentations and Events

  • Village Capital Health: US 2015
    Presenter | Intellectual Property Issues for Startups
    November 4, 2015
  • Techstars Austin Chapter
    Presenter | Intellectual Property Issues for Startups
    August 30, 2013
  • Nation Council of Entrepreneurial Tech Transfer
    Presenter and Moderator | Lecture 2: Copyright and Trademarks
    April 24, 2008
  • WIREC 2008 Official Side Event
    Panelist | Legal Considerations and Strategies for Cleantech Start-ups
    March 6, 2008
  • Clean Energy Venture Summit
    Panelist | Legal Considerations and Strategies for Cleantech Start-ups
    May 14, 2007