Eric S. Tautfest
Partner

Patent litigation is different from other areas of law. The technologies involved can be very complex, making it difficult to explain how they work to someone outside the client’s industry. My approach in each case is to learn everything I can about my client’s business and the technologies at issue so if a trial is necessary, I can boil it down to terms that the judge or jury will understand, which helps them focus on the real issues at stake.

Chair of the Intellectual Property Department, Eric Tautfest is a skilled litigator and trial lawyer who represents clients in various intellectual property disputes, with a particular focus on patent infringement litigation and trial in federal courts across the country. He has successfully prosecuted and defended numerous patent infringement claims involving a wide variety of technologies, including wireless telecommunications, software, fiber optics, computer displays, image compression, medical devices, the Internet plus many more.

Clients also rely on Eric to protect and defend their rights in cases involving trademarks, trade secrets, copyrights, and other IP disputes. In addition, Eric guides clients through many types of IP transactional matters, from conducting due diligence and asset valuations to structuring license and purchase/sale agreements.

With considerable experience representing clients on both sides of the docket, and having served as in-house counsel, Eric brings a holistic and business-minded approach to every case. While Eric is known for being an aggressive litigator and courtroom advocate when necessary, a jury trial may not always be the best strategy. He focuses on fully developing his client’s strategy from case inception, which leads to a more efficient resolution and, if trial is necessary, a better trial outcome.

Before joining the firm, Eric held an in-house position that gave him a better understanding of the industry from his clients’ perspective and hands-on experience resolving the challenges businesses face while protecting their IP assets. This background also helps Eric visualize what a successful outcome looks like for the decision makers on both sides of a case. Once he has a solid grasp of the competing interests involved, Eric can explore creative ways to bridge the gap and achieve a positive outcome for his clients. Based on his reputation for reaching effective outcomes outside the courtroom, clients have called on Eric to serve as settlement counsel in several patent infringement cases.

Representative Experience
  • Served as litigation counsel and helped secure a $506MM verdict in a patent infringement jury trial against Apple (Optis Wireless Technology LLC et al. v. Apple Inc.). Click here to learn more. 
  • 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.
Thought Leadership / News
February 13, 2019 
 In the News

Law360 (subscription required)

September 23, 2017 
 In the News
Dallas Business Journal
June 2017 
 Thought Leadership
Judicial Profile: Hon. Rodney Gilstrap
The Federal Lawyer
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 - 2022)
  • Named a "Super Lawyer" by Texas Super Lawyers (a Thomson Reuters company) as published in Texas Monthly (2021)
  • Selected as a Best Lawyer in Dallas by D Magazine (2018 - 2019, 2021 - 2022)
  • Named to America's Top 100 Bet-the-Company Litigators list (2019)
  • Named to America's Top 100 High Stakes Litigators list (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
Related Employment
  • PanOptis Patent Management, LLC, Principal
Organizational Involvement
  • 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
  • Texas Bar College
Education
  • J.D., Southern Methodist University Dedman School of Law (2000)
  • B.A., Political Science, Minor in Korean Studies, Brigham Young University (1996)
Bar Admission
  • Texas
Court Admissions
  • 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
  • United States District Court, Western District of Texas
Language
  • Korean - Fluent