Kelly J. Kubasta

Attorney / Shareholder

For more than 20 years, Kelly Kubasta has built his entire practice around developing and executing an intellectual property strategy that enhances and enforces the client’s competitive advantages in an effective and efficient manner.

Kelly partners with each of his clients to leverage an entire array of intellectual property assets, including patents, trademarks, service marks, trade dress, copyrights, and trade secrets. His practice spans all phases, including:

  • Developing and maintaining an IP portfolio both in the U.S. and abroad;
  • Monetizing IP assets through technology transactions such as software licenses, Software as a Service (SaaS) agreements, joint marketing agreements, joint development agreements, and manufacturing/distribution agreements; and
  • Enforcing and defending IP assets, including patent, trademark, and unfair competition litigation, patent validity disputes at the Patent Trial and Appeal Board (PTAB), and trademark disputes at the Trademark Trial and Appeal Board (TTAB).

With a wide-ranging intellectual property practice, Kelly brings a unique ability to understand each client’s business, distill and refine the key issues, and implement an intellectual property strategy that maximizes the client’s short-term and long-term advantages.

As a registered patent attorney with the United States Patent and Trademark Office, Kelly counsels clients in strategic patent portfolio management across many technologies, including automotive, computer software, consumer goods, consumer electronics, telecommunications, energy exploration and production, medical, nutraceuticals, and water filtration. He frequently handles patent validity disputes at the PTAB and patent infringement/validity disputes in Federal Court, thus bringing a holistic perspective that improves the likelihood of validity and enforceability of his client’s patents—and achieving monetary and competitive return on investment in a targeted patent portfolio.

No matter the industry, a client’s brand is often one of its most valuable assets. Kelly dedicates a substantial portion of his practice to trademark and branding issues, including development/maintenance of trademark portfolios (domestic and international), clearance of trademarks, licensing and monetization, and disputes over trademark and trade dress rights. Kelly frequently handles trademark opposition and cancellation proceedings at the TTAB, pre-suit demands and settlement agreements, and litigation of trademarks in Federal and/or State Court.

Kelly has been named as one of The Best Lawyers in America® – Commercial Litigation, Litigation – Intellectual Property (2014-2020, 2022), Texas Super Lawyer – Intellectual Property (2011-2022), Best Lawyers in Dallas (D Magazine, 2011, 2013, 2015-2022), and has received an AV Preeminent® Peer Review Rating by Martindale-Hubbell.

Practice Areas

Intellectual Property

Admitted to Practice

States:
State Bar of Texas
Texas Supreme Court
United States District Courts:
District of Colorado
Eastern District of Texas
Northern District of Texas
Southern District of Texas
Western District of Michigan
Western District of Texas
United States Courts of Appeals:
Federal Circuit
Fifth Circuit
Other Admissions:
United States Patent and Trademark Office

Education

University of Texas School of Law, J.D., 1997
University of Texas at Austin, B.S. Mechanical Engineering, 1993

Recognition, Honors, and Achievements

A/V Preeminent® Peer Review Rating by Martindale-Hubbell
Best Lawyers in Dallas, D Magazine (2011, 2013, 2015-2020) – Intellectual Property
Super Lawyer, Texas Super Lawyers (2011-2020) – Intellectual Property Litigation
Rising Star, Texas Super Lawyers (2010-2011) – Intellectual Property Litigation
Best Lawyers in America Selection, The Best Lawyers in America© (2014-2020) – Litigation – Intellectual Property

Presentations and Publications

  • “Transforming Supply Chain Challenges Into IP Wins,” Law.com - Texas Lawyer, November 15, 2021.
  • “It’s Your Thing: Intellectual Property Issues in Marital Property Law,” 46th Annual Advanced Family Law Conference, August 2020.
  • “Intellectual Property Issues in Divorce,” 44th Annual Advanced Family Law Conference, August 2018.
  • “Federal IP Litigation,” Startup Bootcamp: Legal Edition - Mistakes a Startup Can’t Afford to Make, May 2018.
  • “My Client’s Dead. Now What?” 31st Annual Advanced Intellectual Property Law Conference, February 2018.
  • “Intellectual Property Issues in Divorce,” 41st Annual Marriage Dissolution Institute, April 2018.
  • “Enforcing Intellectual Property Without Unintentionally Triggering Litigation,” Dallas Bar Association Headnotes, April 2018.
  • “Introduction to Intellectual Property,” Southern Methodist University Guest Lecture, January 2015.
  • “Recent Intellectual Property Cases and Their Effect on Litigation Strategies,” Intellectual Property Law 2013: Top Lawyers on Trends and Key Strategies for the Upcoming Year (Inside the Minds), December 2013.
  • “Litigation Affecting Five Key Patent Law Areas,” Intellectual Property Law, 2012 ed.: Top Lawyers on Trends and Key Strategies for the Upcoming Year (Inside the Minds), December 2012.
  • “Intellectual Property Issues in Marital Property Law,” New Frontiers in Marital Property Law, October 2012.
  • “Intellectual Property Issues in Marital Property Law,” New Frontiers in Marital Property Law, October 2011.
  • “The Intersection of International Trade and Exhaustion of IP Rights: Can Gray Market Goods Still Be Imported?,” ABA IP Roundtable, March 2011.
  • “Proactive Approaches to the IP Licensing Process,” Intellectual Property Licensing Strategies, 2011 ed.: Leading Lawyers on Educating Clients, Drafting Licensing Agreements, and Resolving Disputes (Inside the Minds), December 2010.
  • “The Million Dollar Idea – I’ve Got It, So Now What Do I Do With It?,” Harvard-Wharton Entrepreneurial Special Interest Group, November 2010.
  • “Divided Infringement and Mixture of Statutory Subject Matter,” University of Texas School of Law 12th Annual Intellectual Property Law Symposium 2010.
  • “To Buy or Not To Buy: Acquired Patents as Litigation Tools,” Mid-Winter Institute of the American Intellectual Property Law Association 2010.
  • “Help! They’re Copying My Home Page,” Dallas Bar Association – Computer Law Section, August 2009.
  • “Common IP-Related Mistakes Made in Corporate Web Sites,” Dallas Bar Association Headnotes 2009.
  • “KSR v. Teleflex: A Case Study,” Dallas Bar Association – IP Section, May 2007.
  • “Trade Secret Review,” Annual Intellectual Property Law Conference of State Bar of Texas – Intellectual Property Section 2006.
  • “Patent Damages: Strategies for Success,” Annual Meeting of State Bar of Texas – Intellectual Property Section 2004.
  • “Practical Issues When Proving and Disproving Patent Damages,” University of Texas Intellectual Property Symposium 2003.
  • “Issue Preclusion as Applied to Claim Interpretation,” Texas Intellectual Property Law Journal, Vol. 10, No. 3, Spring 2002 (with James P. Bradley).
  • “Recent Developments in Trademark Law,” Texas Intellectual Property Law Journal, Vol. 6, No. 2, Winter 1998 (with David L. Hitchcock).
  • “Adapting the Copyright Laws for New Digital Audio Media,” Entertainment, Publishing and the Arts Handbook, 1997-98 Edition.

Representative Matters


Intellectual Property Litigation
  • Represented plaintiff in multiple patent infringement cases regarding variations of water balloon toy product. Preliminary injunctions were obtained in all cases. First case to trial resulted in jury verdict finding willful infringement and monetary damages exceeding $12 million plus two-times punitive damages and substantial attorney fees. All cases subsequently settled on very favorable terms.
  • Represented business intelligence software company in two related patent litigation cases regarding business intelligence software, resulting in jury verdict exceeding $1 million in case where client was plaintiff and favorable settlement in case where client was defendant.
  • Represented credit card issuer in trademark action alleging reverse confusion.
  • Represented large city in breach of contract dispute with software developer regarding development and installation of enterprise-level software system.
  • Represented plaintiff in intellectual property case involving an accounting of profits, copyright infringement, and unjust enrichment.
  • Represented textile manufacturer in multiple copyright disputes regarding infringing products imported from Asia, resulting in favorable resolution without need for litigation