• Intellectual Property
  • Copyright and Trademark
  • Intellectual Property Litigation
  • Patent
• Patent Specialty Practice Group
• Private Equity Industry Team
• Technology Industry Team

Marc Hubbard, a partner in the Intellectual Property practice group at Gardere, is a second generation IP lawyer who has practiced exclusively in the field of intellectual property law since 1988.

Mr. Hubbard enforces and licenses IP rights, as well as manages patent and trademark portfolios. His services include counseling on patenting strategies, drafting and prosecuting patent applications, clearing and registering trademarks, managing patenting and trademark registration activities throughout the world. Additionally, Mr. Hubbard assists clients with managing risk associated with third party IP rights by identifying and avoiding such rights, giving opinions concerning infringement and validity of IP rights, and resolving disputes involving patents, trademarks, web sites, domain names, copyrights and trade secrets. He also regularly represents and counsels clients in IP rights transactions, including structuring and negotiating complex business transactions involving sale and licensing of IP rights, technology transfer, and research and development activities.

Prior to joining Gardere, Mr. Hubbard was an equity shareholder at Munsch Hardt Kopf & Harr, P.C. in Dallas, Texas.

Fields in which Mr. Hubbard has patenting experience include:

• Bio Fuels
• Business Methods
• Computer Memory and Data Storage Systems
• Computer Software
• Data Coding and Compression
• Digital Circuits
• Digital Image Processing
• Digital Signal Processing
• Electro-Mechanical Systems
• Materials
• Medical Devices
• Oilfield Equipment
• RF Data Communication Systems, Antennas and Modulation Schemes
• Robotic Systems
• Semiconductors
• Telecommunication Systems, Including Voice and Data Networks, Optical Communication Systems and Cellular Networks

Representative transactional and litigation matters of Mr. Hubbard include:

• IP indemnity agreements in the telecommunications industry
• Licenses and services agreements for software
• Patent portfolio cross-licenses in the telecommunications industry
• Structuring and documenting the sale and cross-licensing of IP assets in a business spin-off in the medical equipment industry
• Various product development agreements
• Various sponsored research and licensing agreements with major research hospitals and universities in the medical device industry
• Representation of a start-up company and a major research hospital in a patent infringement suit relating to medical equipment

• J.D., Southern Methodist University School of Law (1988)
  • Member, The International Legal Fraternity of Phi Delta Phi
  • Recipient, American Jurisprudence Award, Antitrust Law
  • Recipient, Richard, Harris, Medlock & Andrews’ Award, Patent Law
• B.S., Swarthmore College (1985)
  • Engineering (electrical engineering concentration)

Speeches

• Speaker, Address at the Meeting of the Business Law and Corporate Council Sections at the Texas State Bar Annual Meeting: IP Reps and Due Diligence in Corporate Transactions – A Plea From the Peanut Gallery, Ft. Worth, TX (June 11, 2010) (authored paper for meeting proceedings).
• Speaker, Address to the Intellectual Property Section of the Dallas Bar Association: Value Added Patent Prosecution – Smaller, Stronger, Faster, Cheaper, Dallas, TX (Mar. 2010).
• Speaker, Address at the Tennessee Intellectual Property Law Association Fall 2009 CLE Seminar: Value Added Patent Prosecution, Nashville, TN (Nov. 13, 2009) (authored paper for seminar proceedings).
• Speaker, Address at the Center for American and International Law 47th Annual Intellectual Property Law Conference: Value Added Patent Prosecution – Bigger, Stronger, Faster Cheaper, Plano, TX (Nov. 10, 2009) (authored paper for conference proceedings).
• Speaker, Address at the University of Houston Law Foundation Intellectual Property for the General Lawyer Seminar: Licenses, Transfers and Other Contracts Involving IP, Houston, TX (Aug. 8, 2008).
• Speaker, Address at the American Intellectual Property Law Association Midwinter Institute: Can We Still Revive Unintentionally Abundant Applications – Aristocrat Technologies v. International Game Technology, Phoenix, AZ (2008).
• Speaker, Address at the State Bar of Texas Business Disputes in the Digital Age Seminar: Patent Litigation in the Digital Age, Dallas, TX (May 19-20, 2005).
• Speaker, Address at the State Bar of Texas 18th Annual Intellectual Property Law Course: The FTC Perspective on Patent Pooling, Austin, TX (Mar. 10-11, 2005).

Other Engagements

• Moderator, American Intellectual Property Law Association Annual Meeting, PCT Issues and International Education Committee: A Global Patent Application, Washington, D.C. (2008).
• Moderator, American Intellectual Property Law Association Spring Meeting Plenary Session: Handicapping Pending Supreme Court and Federal Circuit Cases – Patent, Trademark and Copyright, American Intellectual Property Law Association, Boston, MA (2007).

• Admitted to practice before:
  • Texas State Courts
  • U.S. Patent and Trademark Office
• Member, State Bar of Texas
  • Intellectual Property Section
  • Former Chair, PTO Committee
• Member, American Bar Association
  • Intellectual Property Litigation Section
  • Former Co-Chair, International Tech Transfer Subcommittee
  • Former Co-Chair, Patent Policy Planning Committee/ Subcommittee
• Member, Dallas Bar Association
  • Intellectual Property Section
    • Council Member
• Fellow, Texas Bar Foundation
• Fellow, Dallas Association of Young Lawyers (DAYL) Foundation
• Member, American Intellectual Property Law Association
  • Chair, International Education Committee
  • Vice-Chair, 2011 Mid-Winter Institute Committee
  • Member, Professional Programs Committee
    • Co-Coordinator, Spring and Annual Meetings (2007, 2008, 2009 and 2010)
• Member, Advisory Board, Institute of Law and Technology, Center for American and International Law, Plano, TX.
• Member, Institute of Electronic and Electrical Engineers
• Former Board Member, Dallas Association of Young Lawyers (1996 – 1998)

• Recognized, AV Preeminent Rating (5.0 out of 5), Martindale-Hubbell Attorney Directory