Ranked in 1 Practice Areas
6

Band 6

Intellectual Property

Texas

1 Years Ranked

About

Provided by Nate St. Clair

USA

Career

Nathaniel (Nate) St. Clair, II is an Intellectual Property litigator, counselor, and head of the firm’s IP practice group. Nate counsels and represents clients in a wide range of Intellectual Property matters, with an emphasis on patent litigation, and patent portfolio licensing and management. His practice also includes performing infringement and invalidity analyses, patentability studies, risk assessments, and providing general IP counseling, particularly in the electrical and mechanical arts.

His experience ranges from advocating for his clients before the U.S. Court of Appeals for the Federal Circuit in patent litigation matters to generally counseling clients regarding patent and trademark procurement before the U.S. Patent and Trademark Office and in providing strategic counsel to clients in the sports, entertainment, media, and publishing industries. His diverse IP practice services clients ranging from Fortune 100 Companies to solo-inventors and first-time patentees. Nate also sits on the Boards of Trustees of various nonprofit organizations.

Nate has counseled clients in numerous technology areas, including automotive and consumer electronics, avionics, computing devices, data networks, digital imaging, electromagnetics, financial services products, medical devices, oil and gas drilling, optics, power distribution, semiconductor devices, signal processing, software, telecommunications, and wireless devices.

In his sports and entertainment practice, Nate has worked with and represented clients, such as professional sports entities, fashion designers, record labels, recording artists, television and movie production studios, publishing houses, and authors. Nate has been published on various legal topics, including his 2016 publication in Inside the Minds: Navigating Fashion Law, published by Thomson Reuters. Nate’s writing titled “Wearable Technology Brings New Concerns to the Fashion Law Arena,” covers the potential legal concerns of 3D printing and wearable technologies including data security, privacy rights, patent infringement liability, and counterfeiting.

Prior to practicing law, Nate worked as a patent engineer/agent for GE Healthcare for several years and as a law clerk for the General Counsel and Vice President of the Milwaukee Bucks NBA Franchise.

Professional Memberships

American Intellectual Property Law Association

Intellectual Property Owners Association

National Bar Association – Commercial Law & Intellectual Property

Black Entertainment and Sports Lawyers Association

National Sports Law Institute, Board of Advisors, 2020-Present

Texas Bar College, Legal Honor Society

Graphic Arts Show, Graph Expo

Barbara M. G. Lynn IP Inn of Court – Dallas

Texas Minority Counsel Program (TMCP), Steering Committee, 2019-2022

Leadership Council on Legal Diversity, Fellow, Class of 2017

Education

University of Michigan

B.S.E.E.

Marquette University Law School

J.D.

Experience

Nate has developed experience in the following areas:

- Intellectual property litigation

- Patent prosecution and counseling

- Patent portfolio management and valuation

- Commercial Litigation

- Preparing and negotiating intellectual property agreements

- Developing and negotiating monetization programs

- Preparing and negotiating various entertainment and media production agreements

Nate’s patent litigation experience has involved a wide array of technology areas, including automotive control systems, consumer electronics and mechanical devices, avionics and aviation, computing/signals/semiconductors, data networks, digital imaging and optics, electromagnetics, e-commerce, banking and financial services, medical devices, oil and gas drilling, power distribution, software, and telecom/wireless communication.

Nate has represented Fortune 100 corporations, science laboratories, universities and research institutions, family-owned companies, venture capitalists, investors, individual inventors, first-time patentees, musicians, composers, sports leagues, musicians, entertainers, and writers/composers.

Representative Experience

- Represented international manufacturer in securing a preliminary injunction and achieving a favorable global resolution in a multi‑forum trademark dispute involving former U.S. distributors, successfully preserving the client’s trademark rights in the United States.

- Represented three online travel websites in obtaining a Federal Circuit decision affirming summary judgment of non‑infringement in a multi‑case patent dispute, with the court holding that the challenged website functions did not satisfy the asserted patent’s “item code” limitations.

- Represented a cybersecurity company in multi-patent, multi-district litigation involving threat detection and response technologies, securing a favorable resolution.

- Successfully appealed and overturned a Patent Trial and Appeal Board decision in a patent‑obviousness challenge, with the Federal Circuit holding that PTAB improperly shifted the burden of proof and that the petitioner failed to provide a valid motivation to combine the cited prior art.

Chambers Review

Provided by Chambers

Chambers Guide to the USA

Intellectual Property - Texas

6
Band 6
Individual Editorial

Nate St. Clair is known for his litigation experience handling a range of intellectual property disputes including patent infringement cases.

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