Wayne Stacy, Partner

Wayne Stacy is a partner in the Cooley Litigation department and a member of the Intellectual Property Litigation and Patent Counseling and Prosecution practice groups.  Mr. Stacy is ranked by Chambers USA as one of Colorado's top patent lawyers. He is also an adjunct professor of law at the University of Colorado School of Law and the University of Denver School of Law, where he teaches patent and copyright law.

Mr. Stacy's practice focuses on patent litigation—with particular emphasis on software patent litigation. He has recently litigated patents involving database systems, geo-location software, educational software, e-commerce systems, communication-management software, interactive-voice-recognition systems, and gaming software. His litigation experience also extends into the electronics fields, where he has litigated patents involving microcontrollers, medical devices, power supplies, thin-film deposition systems, semiconductor laser components, and cable-industry equipment.

A significant amount of Mr. Stacy's practice is devoted to helping clients avoid unnecessary patent litigation. In particular, he routinely helps clients modify their software products to minimize patent-infringement risks. As part of his litigation-avoidance practice, Mr. Stacy has developed an expertise with the patent reexamination process and its strategic use prior to and during litigation.

Mr. Stacy also specializes in assisting emerging and mid-size companies obtain high-value, strategic patents that can be used to increase or protect market share. Mr. Stacy has recently helped clients build patent portfolios involving network-device management software, storage-management systems, interactive-TV systems, electronic-commerce systems, streaming-media systems, identity-protection software, anti-spyware software, and graphics-management systems.

He is a frequent speaker on patent-litigation and patent-prosecution topics and has spoken on topics such as software-patent acquisitions, IP diligence during M&A, inequitable conduct during patent prosecution, legal ethics for patent prosecution, director liability for patent infringement, and efficient patent-portfolio development. Mr. Stacy was also an editor for the Intellectual Property column of the Colorado Lawyer and is an organizer for one of Colorado's leading legal-education events, the Rocky Mountain Intellectual Property Institute.

Mr. Stacy received his law degree, with high honors, from The George Washington University. While at George Washington, he served on Law Review and was elected to the Order of the Coif. He also served as an extern for the Honorable Judge Rader of the United States Court of Appeals for the Federal Circuit. Mr. Stacy received his B.S. degree, cum laude, in Computer Engineering from Southern Methodist University.

Representative Litigation Cases:

• Bookham, Inc. v. JDS Uniphase (Northern District of California) – litigation counsel for Bookham, accused infringer, in a patent litigation involving tunable lasers.
• Quest Software v. BBS Technologies, Inc. (Eastern District of Texas) – litigation counsel for Quest in a patent infringement and computer fraud action involving monitoring software.
• Qualcomm Incorporated v. Nokia Corporation (Eastern District of Texas) – litigation counsel for Qualcomm in a patent infringement action involving cellular telephony systems and mobile TV applications.
• International Printer Corp. v. Brother International et al (Eastern District of Texas) – litigation counsel for International Printer in a patent infringement action against twelve manufacturers of networkable multi-function printer and imaging technology.
• Ronald A. Katz Technology Licensing, L.P. v. Chevron et al (Eastern District of Texas) – litigation counsel for Katz in a patent infringement action against nine defendants. The technology involves computer telephony and call-center systems.
• Quest Software v. Witness Systems (Northern District of California) – litigation counsel to Quest Software in a software copyright infringement action brought against Witness Systems.
• Interactive Systems Worldwide v. Progressive Gaming International (District of Nevada/District of New Jersey) – litigation counsel to Progressive Gaming in a patent-infringement litigation involving interactive sports-gaming software.
• IPLearn v. Plateau Learning Systems (Eastern District of Texas) – litigation counsel to IPLearn in a patent-infringement litigation involving computerized-learning software.
• Positive Technologies v. Fujitsu America et al. (Eastern District of Texas) – litigation counsel to Positive Technologies in a patent-infringement litigation against Fujitsu and others. The technology in this case involves LCD and plasma display technology.
• Bookham, Inc. v. Unaxis Balzers AG (Northern District of California) – litigation counsel to Bookham in a declaratory judgment action for non-infringement brought against Unaxis Balzers. The technology in this case involved color wheels used in light-projection engines.
• Analytical Spectral Devices v. CDEX (District of Colorado) – litigation counsel to Analytical Spectral Devices in a patent-infringement litigation involving hardware and software for validating the identity of pharmaceuticals.
• BioZone Laboratories v. River's Edge Pharmaceuticals (Eastern District of Michigan) – litigation counsel to Lipoderm, the patent holder, in a patent infringement action against River's Edge.
• Applied Films GMBH v. Galileo Vacuum Systems (Northern District of Georgia) – litigation counsel to Applied Films in a patent-infringement litigation against Galileo Vacuum Systems and its U.S. subsidiary. The technology in this case involves web-coating systems.
• Galileo Vacuum Systems Italy v. Applied Films GMBH (Court of Milan, Italy) – consultant to Applied Films in a patent nullity proceeding brought by Galileo Vacuum Systems in the Court of Milan.
• Phillips v. AWH Corp. (Federal Circuit Court of Appeals) (en banc) – consultant to Phillips' trial counsel in an appeal to the Federal Circuit. The technology involved modular building technologies.
• Quest Software v. Saint Technologies (Canadian Federal Court) – U.S. litigation counsel to Quest Software and consultant for Canadian litigation involving software copyright issues. The technology in this case involves database-management software.
• Kyocera International, Inc. v. Nokia, Inc. (Southern District of California) – litigation counsel to Kyocera in a patent litigation involving cellular phones and power-management systems.
• HyperRoll Israel, Ltd. v. Hyperion Solutions (Eastern District of Texas) – litigation counsel to HyperRoll Israel, Ltd. in a patent-infringement litigation involving database-management software.
• HyperRoll, Inc. v. Hyperion Solutions (Northern District of California) – litigation counsel to HyperRoll, Inc. in a declaratory judgment action brought by Hyperion Solutions.
• Outlast Technologies v. Frisby Technologies (Colorado District Court) (Federal Circuit Court of Appeals) – litigation counsel to Outlast Technologies in a patent-infringement case against Frisby involving phase change materials used to regulate body temperature.
• Quova v. Digital Envoy (Northern District of California) – litigation counsel to Quova in a declaratory judgment action for non-infringement. The technology in this case involved geo-location software and systems.
• MKS Industries v. Advanced Energy (Delaware District Court) – litigation counsel to Advanced Energy in a patent-infringement litigation involving high-voltage power supplies and gas-disassociation systems.
• IPLearn v. Skillsoft (Northern District of California) – litigation counsel to IpLearn in a patent-infringement litigation involving computerized-learning software.
• IPLearn v. SmartForce (Northern District of California) – litigation counsel to IpLearn in a patent-infringement litigation involving computerized-learning software.
• Stratos LightWave v. Picolight (Delaware District Court) – litigation counsel to Picolight in a patent-infringement litigation involving vertical cavity surface emitting lasers (VSCELS).
• Picolight v. Honeywell (Delaware District Court) – litigation counsel to Picolight in a patent-infringement litigation involving vertical cavity surface emitting lasers (VSCELS).
• Murex Licensing v. Vicinity (Eastern District of Virginia) – litigation counsel to Murex Licensing in patent-infringement litigation involving location and mapping software.

Education

• George Washington University Law School
  JD, with high honors, Order of the Coif
• Southern Methodist University
  BS Computer Engineering, cum laude

Court Admissions

• All Colorado State Courts
• All Texas State Courts
• U.S. Court of Appeals, Federal Circuit
• U.S. District Court, District of Colorado
• U.S. District Court, Eastern District of Texas

Admissions

• Colorado
• Registered to practice before the United States Patent & Trademark Office (USPTO)
• Texas

Memberships

• Colorado Bar Association
• State Bar of Texas