John Norris is of counsel in the firm’s Houston office and focuses his practice in the areas of patent, trademark, trade secret, and unfair competition matters.
He concentrates on patent and trade secret litigation involving a wide range of technologies, especially those related to chemical and petrochemical technologies. His practice also includes counseling clients on intellectual property enforcement matters, defensive and litigation strategy, licensing, and settlement negotiations. Mr. Norris also serves as a third party neutral and mediator in patent infringement disputes.
Mr. Norris is skilled in all areas of patent litigation, including both actions in U.S. district courts and investigations by the U.S. International Trade Commission (ITC) under Section 337. His role as lead counsel includes case strategy and development, selection and preparation of expert witnesses, trial preparation, direct and cross-examination of witnesses, and appellate issues. Mr. Norris has handled cases in his technical specialty, chemistry, involving technologies such as ethylene oxide catalysts and processes, nylon dyeing and carpet manufacturing processes, propylene polymerization catalysts and processes, hydrogen sulfide scavengers for petroleum stocks, herbicide formulations and processes, and polyvinyl chloride processes. He has also handled cases involving a wide variety of other technologies including genetically engineered hormone formulations, semiconductor manufacturing processes, and oil field technology such as downhole apparatus.
Mr. Norris’ significant matters include:
- CodePro Innovations LLC v. Shell Oil Company. Defense of patent infringement action filed in the Southern District of Texas in 2013. After favorable claim construction for defendant, case was resolved through mediation.
- Promote Innovation, LLC v. Pennzoil-Quaker State Company d/b/a SOPUS Products, Inc. Defense of false patent marking complaint filed in Eastern District of Texas in 2010. Case settled.
- Patent Group, LLC v. Gayla Industries, Inc. Defense of false patent marking complaint filed in the Eastern District of Texas in 2010. Case settled.
- Ronald A. Katz Technology Licensing, L.P. v. General Motors Corporation, et al.Successfully represented General Motors Corporation in this patent infringement suit.
- Union Carbide v. Shell. Defense of patent infringement action filed by Union Carbide against Shell with respect to two patents directed to ethylene oxide catalysts and another patent directed to a process for making ethylene oxide. Jury trial verdict for Shell on all three patents. On appeal, judgment was affirmed as to both catalyst patents, and reversed and remanded as to process patent. Union Carbide Chems. & Plastics Tech Corp. v. Shell Oil Co., 308 F.3d 1167 (Fed. Cir. 2002). A second trial on the process patent and a second appeal followed, after which the case settled. Union Carbide Chems. & Plastics Tech. Corp. v. Shell Oil Co., 425 F.3d 1366 (Fed. Cir. 2005).
- Burlington Industries v. Solutia. Defense of action purportedly for breach of patent license agreement. Burlington filed a preliminary injunction motion to enjoin Solutia from selling nylon fiber that could be used by carpet manufacturers for making certain stain-resistant carpets allegedly covered by certain patents. Summary judgment motion was filed on behalf of Solutia. After a court hearing on both motions, the court denied Burlington its requested injunction and granted Solutia summary judgment. Burlington ultimately dismissed the case. (2001-2009).
- Honeywell v. Solutia. Defense of patent infringement action filed by Honeywell with respect to Solutia carpet fiber treated with heat-activated adhesive. Favorable settlement after filing of summary judgment motion on behalf of Solutia. Rather than respond to the summary judgment, Honeywell approached Solutia to resolve the matter. Case was dismissed, and a favorable settlement was obtained for Solutia. (2001-2002).
- Whitstone Candy Co. v. Nestle U.S.A.,Inc. Defense of action brought on claims of trade secret misappropriation, breach of contract, fraudulent inducement, and negligent misrepresentation. Summary judgment obtained on all claims. (2001-03).
- Shell Exploration & Production Co. v. TransCanada. Trade secret litigation in Texas state district court involving process design of sulfur removal units for gas plants. Settlement after some discovery and negotiation. (1999-2000).
- Studiengesellschaft Kohle v. Shell. Patent litigation on polypropylene catalyst patent. Favorable summary judgment invalidating patent claims; upheld on interlocutory appeal; leading to favorable settlement. (1993-98). Studiengesellschaft Kohle, m.b.H. v. Shell Oil Co., 112 F.3d 1561 (Fed. Cir.), cert. denied, 522 U.S. 996 (1997).
- Shell v. Studiengesellschaft Kohle. Action for fraud and breach of contract of patent license agreement. Summary judgment of breach of contract granted based on most favored licensee provision in patent license agreement; leading to favorable settlement. (1995–98).
- Studiengesellschaft Kohle v. Formosa Plastics. Patent litigation on polypropylene catalyst patent. Settlement after discovery. (1995-99).
- 3V v. JTS Enterprises. Trade secret and unfair competition litigation on technology related to suspending agents for S-PVC polymerization. Favorable decision on interlocutory appeal with respect to enforcement of arbitration clause. Case dismissed. Carlin v. 3V Inc., 928 S.W. 2d 291 (Tex. App. – Houston [14th Distr.] 1996, no writ).
- General Instrument v. Intel. Patent litigation on semiconductor process patents. Favorable settlement after discovery and ITC victory. (1988-91).
- Idacon v. Central Forest Products. Patent litigation involving patent on wood preservation composition and method. Favorable bench decision after trial holding patent valid and infringed. (1982-84). Idacon, Inc. v. Central Forest Products, Inc., 3 U.S.P.Q.2d 1079 (E.D. Okla. 1986).
- In The Matter Of Certain EPROMs. Eleven-week trial on eight semiconductor patents resulted in exclusion order of all EPROM products; upheld on appeal. (1987- 1990). Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821 (Fed. Cir. 1991).
- Monsanto v. Eli Lilly.Patent litigation filed by Monsanto on prolonged release formulation of bST (bovine somatotropin). Settlement. (1991-93).
- Monsanto v. Eli Lilly. Patent litigation filed by Monsanto on method of solubilization and naturation of bST (bovine somatotropin). Settlement. (1992-94).
- Monsanto v. Geshuri. Interlocutory injunction and contempt proceedings in Israel involving Israeli counterparts to United States glyphosate patents and glyphosate manufacturing process patents. Judgment for Monsanto (1983-85).
- Monsanto v. ICI.Patent litigation on oxazolidine antidotes for acetanilide herbicides. Settlement after discovery. (1990-92).
- Monsanto v. Stauffer. Interlocutory injunction proceedings and other enforcement proceedings involving the foreign counterparts of United States glyphosate herbicidal method and salt compound patents in United Kingdom, Germany, and New Zealand. (1983-84).
- Monsanto v. Stauffer.Patent litigation and several month bench trial involving glyphosate herbicidal method and glyphosate salt compound patents. Settlement. (1983-87).
- Mycogen v. Monsanto. Civil action under 35 U.S.C. § 146 seeking review of interference decision of Board of Appeals and Interferences of U.S. Patent and Trademark Office. Technology related to Bacillus thurengensis (Bt) protoxin gene. Action dismissed. (1996-98).
- Nye v. Sage Products. Patent infringement action on behalf of individual inventor and exclusive licensee of human waste toilet receptacle patent. Following discovery and completion of successful reexamination of patent, favorable settlement obtained. (1981-1985).
- Petrolite v. Nalco Chemical. Defense of patent infringement action involving process and composition for suppressing evolution of hydrogen sulfide gases. Settlement after discovery, one day of trial, and reexamination of patent. (1994-96).
- REM Chemicals v. Stanley Tools.Infringement litigation on patent covering processes for refining metal surfaces to condition of high smoothness and brightness. Successful motion to disqualify counsel for defendant, followed by favorable settlement. (1996-97).
- Scivision v. Shell.Copyright infringement and breach of contract action involving oil exploration seismic interpretation software. Favorable summary judgment motion. (1995-96).
- Tri-State Oil Tools v. Homco International.Patent litigation on downhole milling tool patents. Settlement after discovery. (1990-91).
- W.R. Grace v. Polyguard Products. Patent litigation involving patent on waterproofing system for concrete construction surfaces. Settlement. (1991-92).
Mr. Norris received a BSChE, with high honors, in Chemical Engineering from the University of Arkansas in 1969 and he received his J.D., with honors, from George Washington University Law School in 1977. Mr. Norris served as a Law Clerk to Chief Judge Howard T. Markey, U.S. Court of Customs and Patent Appeals (CCPA), predecessor of the U.S. Court of Appeals for the Federal Circuit (1977-79). His responsibilities included acting as technical advisor and law clerk for appeals from U.S. Patent and Trademark Office to the CCPA and for a variety of appeals from federal district courts to the Second, Third, Seventh, Eighth, and Tenth Circuits.
Prior Engineering Experience
Mr. Norris worked as a chemical engineer for Esso Research Laboratories (now Exxon Research) (1969-74). His experience included pilot plant research related to catalytic cracking catalysts, and flue gas desulfurization processes.
Honors & Awards
Mr. Norris has been selected for inclusion in The Best Lawyers in America directory for each of the last 20 years. Mr. Norris was also named in the 2002 edition of Texas Lawyer’s Go-To Guide. In 2007, Mr. Norris was named in the Who's Who Legal directory as one of the leading patent lawyers in Texas. Mr. Norris has been named a Texas Super Lawyer for eight years. In 2008, Chambers USA recognized Mr. Norris as a "highly regarded" and "very experienced" IP litigator.
Mr. Norris is a member of the American Bar Association, American Intellectual Property Law Association, Federal Circuit Bar Association, and Federal Circuit Historical Society. He is also a member and past-president (1996-1997) of the Houston Intellectual Property Law Association and past-treasurer (1986-1987) of the State Bar of Texas, Intellectual Property Law Section.
Mr. Norris is a Life Fellow with the Houston Bar Foundation and Sustaining Life Fellow with the Texas Bar Foundation.
Mr. Norris has served as an adjunct professor at the University of Houston Law Center, teaching Patent Remedies and Defenses.
Publications & Speaking Engagements
"MedImmune's Expansion of DJ Jurisdiction: Beyond the Unmuzzled Licensee of Lear." HIPLA 23rd Annual Institute on Intellectual Property Law, (October 2007).
Intellectual Property Law Review. Clark Boardman Company, Ltd., 1988-1991.
- U.S. Court of Customs and Patent Appeals (Now U.S. Court of Appeals for the Federal Circuit) for Chief Judge Howard T. Markey
- George Washington University, JD, 1977
- University of Arkansas, BSChE, 1969