Bart Eppenauer is a partner in the Intellectual Property Group of Shook and managing partner of the firm’s Seattle office. His practice at Shook focuses on complex technology and IP transactions, strategic IP counseling and analysis, pre-litigation and litigation defense strategy and resolution, and technology and IP policy advocacy. Prior to rejoining Shook, Bart was Chief Patent Counsel and Associate General Counsel at Microsoft for more than a decade. In that role, Bart led the development of Microsoft’s worldwide patent portfolio and managed a team of more than 100 IP professionals offering IP counseling and product development support across all of Microsoft’s business and research divisions. Under Bart’s guidance, Microsoft’s high-quality patent portfolio resulted in an extremely successful IP licensing program and received top rankings in IEEE Spectrum, BusinessWeek and The Patent Board

Bart has extensive experience in technology and IP transactions, including software and technology licensing agreements, cloud services agreements, inbound and outbound patent licensing, data use/sharing agreements, industry standards participation and usage (including patent pools and standards essential patents), open source software licensing and counseling, strategic alliances, joint development and collaboration agreements, and due diligence involving IP asset evaluation. He works closely with government and judicial officials, academics and industry leaders worldwide on IP policy issues. Bart was also counsel of record and co-authored U.S. Supreme Court amicus briefs filed on behalf of the Intellectual Property Owners Association in WesternGeco v. ION Geophysical (2018), Cuozzo Speed Technologies v. Lee (2016) and Alice Corp. v. CLS Bank (2014).

Bart is a frequent author and speaker on a range of IP and technology licensing issues. He has been published and quoted in IAM, Inside Counsel, Morning Consult, Law360, Patently-O, Managing Intellectual Property and IP Watchdog.

 

Publications and Presentations

Top 10 Priorities in Technology Transactions, In-House Counsel Forum, Association of Corporate Counsel Colorado, April 13, 2022 (with Jama Cantrell and Chris Maxie).

Top Issues of an Aspiring Inventor & Entrepreneur, Intellectual Property Owners Education Foundation Annual Celebration, December 9, 2021.  

The Latest Legal Trends in Data Scraping and Ownership, Law360, August 17, 2020 (with Wesley Horner). 

Dealing in Data, Data Business Congress, San Jose, Calif., February 4, 2020.

Sound View Escalates Patent Assault on Open Source Software with New Wave of Lawsuits, Cloud IPQ: Enhancing Your Cloud IP IQ, April 30, 2019. 

Bank of America and Wells Fargo Hit With Patent Suit Targeting Mobile App Development, Cloud IPQ: Enhancing Your Cloud IP IQ, September 6, 2018.

Scale MP Looks to Turn the Tide Against Competitor TidalScale with Patent Infringement and Trade Secret Misappropriation Case on Virtualization Technology for Cloud Computing, Cloud IPQ: Enhancing Your Cloud IP IQ, August 24, 2018. 

Cloud Computing Patent Litigation Trends - Competitor Cases, Open Source Targets, Cloud Customers, Cloud IPQ: Enhancing Your Cloud IP IQ, May 15, 2018.

Ribbon Communications Files Two More Lawsuits Against Metaswitch in Ongoing Patent BattleCloud IPQ: Enhancing Your Cloud IP IQ, April 17, 2018.

Best Practices for Managing Relationships with Corporate Clients, 2018 IPO Spring Summit, March 8, 2018.

Bart Eppenauer, Citrix Files Patent Infringement and Unfair Competition Strike Against Avi Networks' Cloud Application Delivery Platform for OpenStackCloud IPQ: Enhancing Your Cloud IP IQ, Feb. 20, 2018.

Bart Eppenauer, BMC Software Launches Patent Strike Against Cloud Services of Competitor Cherwell Software, Cloud IPQ: Enhancing Your Cloud IP IQ, Jan. 30, 2018. 

Software Patent Eligibility: How to Articulate a Patent-Worthy Invention, CPA Global Webinar, Dec. 14, 2017.

Bart Eppenauer, Federal Circuit Vacates Judge Gilstrap's Controversial Venue Test, Cloud IPQ: Enhancing Your Cloud IP IQ, Sep. 21, 2017.

Bart Eppenauer, Sling TV Sued on Use of H.264 Standard in Streaming Media Devices, Cloud IPQ: Enhancing Your Cloud IP IQ, Sep. 15, 2017.

Bart Eppenauer, Four Reasons Why Trump's Pick for the Next USPTO Director Matters, Morning Consult, Jan. 11, 2017. 

Key CAFC decisions confirm software is patentable in post-Alice world, says Microsoft’s former patent chiefIAM, Oct. 31, 2016.

USPTO and Section 101: New Examiner Guidelines, IPO's IP Chat Channel, May 18, 2016.

Cuozzo at the Supreme Court – Determining the Future Value of Inter Partes Reviews at the Patent Office, IP Watchdog, Apr. 24, 2016.

Section 101 – Pivotal Moment for Clarity on Patent Subject Matter Eligibility, PatentlyO, Apr. 21, 2016.

Patent reform issues are back in action again at the U.S. Supreme Court, Inside Counsel, Feb. 19, 2016.

Emerging Antitrust Regulation of Intellectual Property Licensing in Asia, IP Watchdog, Aug. 16, 2015.

Beware the IP non-assert clause in AWS cloud service agreement, warns ex-Microsoft patent chief, IAM, July 12, 2015.

Litigation abuse driving negative sentiment around patents, IP Watchdog, Mar. 5, 2015.

America Must be the Leader in Patenting Innovations, Including Software, IP Watchdog, Mar. 2, 2015.

DDR Holdings – Federal Circuit Forges a Sensible Path on Software Patents, PatentlyO, Dec. 14, 2014.

Software patent owners have nothing to fear from the CAFC's Ultramercial decision, says Microsoft's former chief patent counsel, IAM, Nov. 21, 2014.

They Tried to Make Me Go to PTAB..., Managing Intellectual Property, Oct. 10, 2014.

The US has not come close to abandoning software patents, former Microsoft chief patent counsel tells IAM, IAM, Oct. 3, 2014.

Panel Discussion of the Supreme Court Decision in Alice v. CLS Bank, Washington State Patent Law Association, Sep. 17, 2014.

Are Digital Transmissions an "Article" Under Section 337? Looking Ahead to the Federal Circuit, Intellectual Property Owners Association Webinar, May 8, 2014.

Understanding the Patent License, Washington State Bar Association Intellectual Property's IP Advanced Licensing: State of the Art CLE (Seattle, Wash.), Feb. 4, 2014.

Bart Eppenauer, First-Inventor-To-File: Considerations From An In-House Patent Counsel Perspective, AIPLA, May 2013.