Shaun Gregory
Of Counsel
Shaun Gregory is a patent litigator who has worked on every side of the patent system: as an engineer, as a U.S. patent examiner, as a patent prosecutor, and now as trial and appellate counsel. He represents clients in district court, before the Patent Trial and Appeal Board, and on appeal to the U.S. Court of Appeals for the Federal Circuit.
Before practicing law, Shaun spent more than 15 years in telecommunications and wireless networking as a network engineer, consultant, and technical trainer. From 2009 to 2013, while completing law school, he served as a patent examiner at the U.S. Patent and Trademark Office in Technology Center 2400, examining hundreds of applications on computer security, cryptography, and networking. That experience shapes how he builds a case: he reads the prosecution history the way the examiner who wrote it did. His appellate wins include a Federal Circuit decision holding, based on the patent’s own drawings, that a claimed “multitude” requires more than the “two or more” of a conventional “plurality.”
Shaun began his legal career in patent prosecution and counseling, then moved his practice to litigation. Today he handles pre-suit investigation and infringement analysis, patent portfolio assessment, district court litigation, and PTAB proceedings, where he has served as lead counsel for patent owners. His technical work covers encryption and data security, wireless communications, networking, and streaming media.
Shaun’s work with machine learning predates the current wave of interest. He first studied neural networks in college in the early 1990s, drafted patent applications on machine-learning systems as a prosecutor, and now uses AI tools in his own pre-suit investigation and litigation work.
Shaun and his wife have seven children and a grandson, and he spends his time away from work with them at amusement parks, sightseeing, and in the outdoors.
Education
- University of Richmond School of Law, J.D., 2013
- University of Denver Sturm College of Law, LL.M. in Taxation, 2022
- University of Phoenix, M.B.A., 2006
- Charter Oak State College, B.S., 2002
Admissions
- Licensed in the District of Columbia
- Licensed in Virginia
- United States Court of Appeals for the Federal Circuit
- United States Patent and Trademark Office (Reg. No. 68,498)
- United States District Court for the Eastern District of Texas
- United States District Court for the Western District of Texas
- United States District Court for the Northern District of Texas
- Intellectual Property
- Business Law
- Counsel for a location-technology patent owner against a major consumer-technology company in district court, PTAB, and Federal Circuit proceedings. The Federal Circuit reversed the PTAB’s obviousness findings on three patents. It vacated as to a fourth, agreeing that the claimed “multitude” means a large number, not the “two or more” of a “plurality.” On remand, the PTAB upheld those claims, and the Federal Circuit affirmed.
- Counsel for defendant, a device-processing technology company, in patent litigation brought by a global logistics provider (N.D. Tex.)
- Counsel for a patent owner asserting networking patents against a leading network-equipment maker (E.D. Tex.)
- Counsel for a patent owner asserting user-interface software patents against a major software company, including claim construction (W.D. Tex.; transferred to W.D. Wash.)
- Counsel for a patent owner asserting lighting-technology patents against a lighting manufacturer (W.D. Tex.)
- Counsel for a patent owner in infringement litigation against a global consumer-electronics manufacturer (E.D. Tex.)
- Counsel for a patent owner in infringement litigation against a software-development platform provider (E.D. Tex.)
- American Bar Association, member
- American Intellectual Property Law Association, member