Kirt S. O’Neill oversees the intellectual property (IP) practice of the firm’s San Antonio office. He focuses on patent and trademark infringement litigation and other IP disputes. He is a registered patent lawyer and represents clients in a broad array of technology areas. Mr. O’Neill sits on the firm’s IP committee.
Practice & Background
Mr. O’Neill combines first-chair jury trial experience with significant technical knowledge, particularly in the areas of telecommunications systems and devices, signal processing and electronics. He has also testified as an expert witness on patent infringement and validity issues and on patent claim construction.
Mr. O’Neill also regularly assists clients with the development, licensing and enforcement of their IP portfolios, with the goal of maximizing portfolio value outside the court system.
Mr. O’Neill is the past president of the San Antonio Intellectual Property Law Association and is a former adjunct faculty member at St. Mary’s University School of Law. While at the University of Texas School of Law, Mr. O’Neill was the associate editor of the Texas Law Review. Prior to law school, he was a President’s Endowed Scholar, National Merit Scholar and Schlumberger Foundation Fellow.
Mr. O’Neill’s recent engagements include:
- defense of a leading telecommunications provider in a patent infringement case concerning network authentication. Prism Tech., LLC v. AT&T, Inc. and AT&T Mobility, LLC, Civ. No. 8:12-CV-122
- defense of a leading cellular carrier and a mobile device maker in a patent infringement case in the Eastern District of Texas concerning Wi-Fi calling using Voice over IP. ISwitch, LLC v. T-Mobile USA, Inc., RIM Ltd., and RIM Corp., Civ. No. 6:12-CV-112
- defense of a leading managed hosting company in a patent infringement case in the District of Delaware concerning cloud computing. Clouding IP, LLC v. Rackspace Hosting, Inc., Civ. No. 12-675 (LPS)
- enforcement of trade secrets concerning remote check depositing on behalf of a leading financial services company. USAA v. Mitek Systems, Inc., Civ. No. SA-12-CA-0282-FB
- enforcement of a software patent in the Eastern District of Texas against Microsoft, IBM and other industry leaders in the data integration field, resulting in a favorable settlement. Juxtacomm Tech., Inc. v. Ascential Software Corp. et al., Civ. No. 02:07-CV-359-LED
- enforcement of 10 patents concerning flow cytometry cell sorting on behalf of an early-stage, high-growth biotechnology company. XY, LLC v. Trans Ova Genetics, L.C., Civ. No. 5:12-CV-208-LG
- defense of a Taiwanese electronics manufacturer in an International Trade Commission action on patents covering Ethernet controllers. In the Matter of Certain Network Controllers, Inv. No. 337-TA-531
- defense of a leading cellular technology company in the Eastern District of Texas on patents concerning next-generation CDMA cellular telephony. Ericsson Inc. et al. v. QUALCOMM Inc., Civ. No. 2-96-CV-183
- defense of a major retailer in a trademark infringement case, resulting in a favorable directed verdict. HEB Grocery Company, LP v. Texas Spice Company, Inc., Civ. No. SA-05-CA-1044-HLH
- defense of a major entertainment company defending a $30 million breach-of-contract royalty claim in private arbitration, resulting in a favorable summary judgment. Judith Belushi Pisano and Daniel E. Aykroyd v. House of Blues Brands Corp. et al.
- expert witness service on behalf of an accused infringer of a patent concerning nondestructive pipe testing; gave expert reports and deposition testimony. Oilfield Equipment Marketing, Inc. v. New Tech Systems, Inc., Civ. No. MO-02-CA-183.
Awards & Accolades
Mr. O’Neill was recognized as one of the “Best Lawyers in San Antonio” by Scene in S.A. magazine, as well as the Best Lawyers in America. He was also named “Litigator of the Week” by The American Lawyer in 2016.