Kelly Kubasta, Member of Klemchuk Kubasta LLP

Kelly’s practice encompasses all aspects of intellectual property, with a particularemphasis on patent, trade dress, and trademark litigation and licensing. He prides

Kelly’s practice encompasses all aspects of intellectual property, with a particular
emphasis on patent, trade dress, and trademark litigation and licensing. He prides
himself on carefully crafting legal strategies in a manner that provides maximum benefit
to the long-term business goals of the client. Kelly has substantial experience in Federal
Court, both at trial and through appeal, as well as in Texas state court. He is skilled in
developing and maintaining IP portfolios; negotiating dealer/franchise, software, and
license agreements; constructing Internet e-commerce policies; and resolving domain
name disputes through ICANN. Kelly is a registered patent attorney and has prosecuted
utility and design patents in various fields, including mechanical and electronic devices,
industrial equipment, manufacturing systems, telecommunications, optics, software, and
business methods.

Representative Experience

• Litigation of intellectual property disputes, including claims of infringement of patents,
trademarks, product configuration trade dress, and copyrights, as well as related claims
such as Lanham Act unfair competition, tortious interference, business disparagement,
and other business-related causes of action.

• Performance of pre-litigation investigations assessing patentability and infringement
controversies, including freedom-to-practice, non-infringement, and invalidity opinions.

• Procurement of patents, trademarks, and copyrights both in the United States and in
foreign countries, including analysis and counseling regarding strategic value of portfolios.

• Negotiation and enforcement of IP licenses and technology transfer agreements.

• Performance of intellectual property due diligence investigations in conjunction with
merger and acquisition deals.

• Preparation, design, and implementation of competitive intelligence and corporate
intellectual property compliance programs.

Professional Affiliations and Honors

Admitted to practice before the United States Patent and Trademark Office, 1998
State Bar of Texas, Intellectual Property Section, Member, 1997-Present, Ethics and Unauthorized
Practice Committee, Chair, 2006-2008

Dallas Bar Association, Intellectual Property Section, Member, 1997-Present

American Intellectual Property Law Association, Member, 1997-Present

Dallas Association of Young Lawyers, Member, 1997-Present

University of Texas School of Law, Teaching Quizmaster, 1995-1996

Presentations and Publications

“Common IP-Related Mistakes Made in Corporate Web Sites,” Dallas Bar Association Headnotes,
July 2009

“KSR v. Teleflex: A Case Study,” Dallas Bar Association – IP Section, May 25, 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