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Joan Beckner is a partner in the firm’s Houston office. Her practice focuses on intellectual property litigation and client counseling in energy-related fields, including upstream-to-downstream oil and gas, manufacturing, construction, chemicals, renewables, software, and business methods.
Ms. Beckner is experienced in every phase of litigation, including preliminary evaluation; discovery management; strategic case development; witness examinations; expert reports; dispositive and non-dispositive briefs; oral argument at motion, claim construction, and evidentiary hearings; trial; and appeal. Ms. Beckner also evaluates client and competitor patent portfolios and has prepared freedom-to-operate (noninfringement and/or invalidity) opinions, preacquisition due diligence reports, third party reexamination requests, licenses and other contracts, and arbitration and mediation papers and presentations.
Before law school, Ms. Beckner progressed from project management to supervisory positions as a petroleum engineer and environmental consultant for major oil companies. Ms. Beckner gained broad-based technical experience through her work in various capacities for Exxon, Shell, Mobil, Texaco, and ExxonMobil companies. Ms. Beckner is a registered professional engineer in the state of Texas (inactive status).
Ms. Beckner’s representative matters include:
- Weatherford International, Inc. and Weatherford/Lamb, Inc. v. Halliburton Energy Services, Inc. and General Plastics & Composites, LP. Represent plaintiffs in patent infringement suit pending in the U.S. District Court for the Eastern District of Texas.
- Davis-Lynch, Inc. v. Weatherford International, Inc. Represented defendant in patent infringement suit concerning oil and gas well cementing equipment in the U.S. District Court for the Eastern District of Texas. Case settled favorably on the first day of trial.
- Cameron International, Inc. v. Dril-Quip, Inc. Represented defendant in patent infringement suit concerning subsea horizontal trees in the U.S. District Court for the District of Delaware and, upon obtaining venue transfer, the U.S. District Court for the Southern District of Texas. Defeated plaintiff’s motion to dismiss, pursued counterclaims, and obtained cross-license on favorable terms.
- Halliburton Energy Services, Inc. v. M-I, LLC. Represented defendant in patent infringement suit concerning drilling fluids in the U.S. District Court for the Eastern District of Texas. Contributed briefing to successful motion for summary judgment invalidating all asserted claims of the patent-in-suit.
- Newton Research Partners, LP v. Shell Exploration & Production Co. Represented defendant in trade secret misappropriation suit in the Northern District of Texas.
Activities
Ms. Beckner is a member of the American Bar Association, American Intellectual Property Law Association, Houston Bar Association, Houston Intellectual Property Law Association, Society of Petroleum Engineers (Twenty-Five Year Member Club), and Women’s Energy Network.
In addition, in connection with her pro bono work for the Houston Volunteer Lawyers Program, Ms. Beckner has been lead appellate counsel in a successful appeal to the Board of Immigration Appeals, lead trial counsel in a successful representation involving multiple hearings and a bench trial in federal Immigration Court, and primary writer of an amici brief to the U.S. Supreme Court.
Education
Ms. Beckner received a B.S. in Petroleum Engineering, with distinction, from Stanford University in 1986. She also received an M.S. in Petroleum Engineering from Stanford University in 1988. She received her J.D. in 2003 from the University of Houston Law Center, where she served as the chief articles editor of the Houston Law Review.
Speeches and Publications
Ms. Beckner is a frequent speaker and author on intellectual property issues:
Articles
“Patent Infringement by Component Export: Waymark Corp. v. Porta Systems Corp. and the Extraterritorial Effect of U.S. Patent Law.” 39 HOUS. L. REV. 803 (2002), reprinted in 35 INTELL. PROP. L. REV. 99, West (2003). Foundational article on 35 U.S.C. § 271(f) and related statutes. Cited in Chisum on Patents, Am.Jur., law reviews, appellate briefs.
Speeches
“When an Exclusive License Is a ‘Virtual Assignment’: Standing to Sue Without Joinder of the Patentee.” University of Houston Law Center (2003). Transcript on file with the University of Houston Law Center Institute for Intellectual Property & Information Law.
Books
Employee Noncompetition Law, 2011 Edition (publication pending). Thomson West. Named author of annual update to intellectual property law treatise.
Employee Noncompetition Law, 2010 Edition. Thomson West. Lead editor for annual update to intellectual property law treatise authored by Donald J. Aspelund and updated by Stephen L. Lundwall.
Employee Noncompetition Law, 2009 Supplement. Thomson West. Lead editor for annual supplement to intellectual property law treatise authored by Donald J. Aspelund and supplemented by Stephen L. Lundwall.
U.S. Patent Litigation Statistics. patstats.org. University of Houston Institute for Intellectual Property & Information Law, 2007, Rule 36 Case Editor for quarterly updates to statistics on summary affirmances by the U.S. Court of Appeals for the Federal Circuit.
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