Tautfest, Eric S. Photo

Our People

Eric S. Tautfest

Partner
Education
  • J.D., Southern Methodist University Dedman School of Law, 2000
  • B.A., Political Science, Minor in Korean Studies, Brigham Young University, 1996
Bar Admissions
  • Texas
  • United States Supreme Court
  • United States Court of Appeals, Federal Circuit
  • United States Court of Appeals, Fifth Circuit
  • United States District Court, Eastern District of Texas
  • United States District Court, Northern District of Texas
  • United States District Court, Southern District of Texas
Language
  • Korean - Fluent

Eric Tautfest is a skilled patent litigator and trial lawyer with extensive experience assessing the viability of patent monetization strategies and implementing aggressive patent enforcement litigation and licensing programs from inception through end-of-life.  He has a long history of prosecuting and defending patent infringement claims in Federal court, and before joining Gray Reed, was a founding member and chief licensing officer of a large patent monetization entity.  Eric’s ability to reach timely and resourceful resolutions has led to his serving as settlement counsel in numerous patent infringement cases. 

Representative Experience

  • Negotiated the funding, purchase and documentation of four large patent portfolios from three major multi-national electronics companies.
  • Represented a mobile telecommunications innovator in litigation and in connection with the sale of its patent portfolio for $160 million.
  • Founding member of the company that financially backed two patent litigations, each resulting in several hundred million dollar judgments in favor of the financed party.
  • Sale of acquired patents to a major U.S. semiconductor company for better than eight times return to investors within six weeks of acquisition.
  • As settlement counsel, negotiated and closed multi-party litigation settlement and patent portfolio license on behalf of licensor software company.
  • Represented multi-national electronic payment services company as settlement counsel in multiple concurrently pending multi-party patent infringement litigations, resulting in all defendants settling. Personally negotiated all settlement and patent license agreements.
  • Represented U.S. photographic technology company in multiple multi-party patent infringement litigations as settlement counsel, resulting in all defendants settling. Personally negotiated all settlement and patent license agreements. First-chaired litigation teams in four concurrently pending suits.
  • Represented computer networking and software company as settlement counsel in multi-party patent infringement litigation, resulting in all defendants settling. Personally negotiated all settlement and patent license agreements.
  • Represented U.S. based VoIP telecommunications company in patent infringement litigation and trial against multiple competitors, with trial resulting in settlement of the three remaining defendants settling at the close of our presentation of evidence.
  • Represented major U.S. based multi-national oil services company in patent infringement litigation and trial against main competitor, with trial resulting in judgment for willful infringement of three patents. Received the third largest patent judgment that year.
  • Represented auto finance company against major automobile insurance company in trademark infringement suit, which resulted in obtaining assignment of infringing marks and license with eight-figure license fees. First-chaired litigation team with suits pending in two federal districts. Personally negotiated settlement and license agreement.
  • Defended national real estate investment trust in class action seeking damages in excess of $125 million obtaining denial of class certification. First-chaired trial of individual claims on merits, obtaining favorable verdict and judgment, zeroing out all claims.
  • Defended against claims brought by major software company for misappropriation of trade secrets, breach of confidentiality and breach of covenant not to compete obtaining dismissal of all claims with prejudice. First-chaired litigation team.
  • Defended local clothing retailers against copyright infringement claims obtaining dismissals of all claims with prejudice. First-chaired litigation team.
  • Represented national consumer specialty electronics manufacturer and retailer in multiple patent infringement cases against competitors, each resulting in settlement and license agreements favorable to client.
  • Defended major multi-national manufacturer of mobile telecommunications equipment in patent infringement litigation obtaining dismissal with prejudice of three asserted patents.
  • Represented major direct seller and multilevel marketer of home decorative and gift products in misappropriation of trade secrets and unfair competition lawsuit against competitor, resulting in several million dollar settlement in favor of client.

Related Employment

  • PanOptis Patent Management, LLC, Principal

Honors

  • Selected by his peers for inclusion in Woodward/White, Inc.'s The Best Lawyers in America in the field of Intellectual Property Litigation (2018)
  • Fellow of the Texas Bar Foundation
  • Life Fellow of the Dallas Association of Young Lawyers Foundation
  • Voted one of the best lawyers in Texas by peers (2008 - 2010), as published in D Magazine's “Rising Stars” edition
  • Barrister, The Honorable Barbara M. G. Lynn American Inn of Court 
  • SMU Law Review Editorial Board and Articles Editor (1999 - 2000)
  • SMU Law Review Association (1998 - 2000)
  • Officer, Phi Delta Phi Law Society, Monteith Inn (1998 - 2000)
  • SMU School of Law Board of Advocates

Professional Activities, Memberships & Affiliations

  • Texas Bar Association
  • Texas State Bar College
  • J. Reuben Clark Law Society (Board of Directors, Dallas)
  • Phi Delta Phi
  • American Intellectual Property Law Association
  • Federal Bar Association
  • Federal Circuit Bar Association
  • U.S. Supreme Court Bar Association
  • American Bar Association
  • Dallas Bar Association
  • Dallas Association of Young Lawyers
  • Texas Young Lawyer’s Association
  • Eastern District of Texas Bar Association

Articles & Publications

  • Co-Author and Presenter, International Litigation: A Confluence of Customs, Culture and Commercial Activity, Continuing Legal Education presentation, July 28, 2006.
  • Author, Temptations to Take: Misappropriation of Trade Secrets, Damages and Remedies, Vol. VII No. 2 Computer L.R.  and Tech. J. 117, 117-147, Winter 2003.
  • Co-Author, International Arbitration Clauses and Federal Preemption, http://www.obeliskcom.com/intlaw/cle.html.
  • Co-Author and Presenter, Legislative and Case Law Update to International Business Transactions, International Law Section of the Dallas Bar Association, Continuing Legal Education presentation, October 1999.