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Tracy J. Willi

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Tracy J. Willi

twilli@willi.com

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Civil Appellate Law

United States Patent Attorney

View Tracy Willi's profile on LinkedIn

Tracy J. Willi focuses on civil, commercial, and intellectual property litigation and appeals in Federal and Texas courts.  Having been licensed to practice law in Texas since 1992, Ms. Willi has extensive trial and appellate experience in business law, civil and commercial law, real estate law, patent, copyright, and trademark litigation, and probate litigation, much of which is reflected in numerous published trial court and appellate decisions.  Ms. Willi has represented clients at all levels of Texas courts including County Courts, District Courts, Courts of Appeals, and the Texas Supreme Court.  She has also represented clients at all levels of federal courts including District Courts, Courts of Appeals, and the United States Supreme Court.  Ms. Willi is Board Certified in Civil Appellate Law by the Texas Board of Legal Specialization and registered to practice patent law before the United States Patent and Trademark Office.

Ms. Willi spent several years defending cases arising out the 1990 ARCO Chemical Company explosion in Channelview, Texas.  She also defended cases arising out of the 1991 explosion at the Angus Chemical Company plant operated by IMC Fertilizer Group, Inc.  Her years of experience in mass tort claims, as well as products liability cases involving defendants, such as Caterpillar Inc., Bell Helicopter Textron, Inc., and Teledyne Technologies, Inc., provide a firm basis for her litigation skills and knowledge.

Ms. Willi is a member of the College of the State Bar of Texas, and the Appellate Practice Sections of the State Bar of Texas and the Austin Bar Association.  From 2003 to 2005, she served as Chair of the Women in the Profession Committee of the State Bar of Texas.  She was voted by her attorney peers to be named a Texas Super Lawyer each year since 2009.  She was listed as a “Super Lawyer” in the 2013 Texas Edition of the Super Lawyers magazine for civil appellate law and in the 2012 National Business Edition and the 2012 Texas Edition of the Super Lawyers magazine for intellectual property litigation.

Ms. Willi is admitted to practice before the United States Supreme Court, the United States Courts of Appeals for the 5th, 6th Circuits, and Federal Circuits, and the United States District Courts for the Eastern, Southern, and Western Districts of Texas.

Education

Doctor of Jurisprudence, South Texas College of Law (1992)

Bachelor of Arts in Biology, University of Texas at Austin (1989)

Publications and Presentations

Tracy J. Willi, Protecting Client Confidences Before, During and After Representation: Issues Raised in Attorney Disqualification Cases, Travis County Bar Association Ethics Seminar (May 2001)

Tracy J. Willi, Civil Appellate Update, Travis County Bar Association, Appellate Practice Section Meeting (November 2000)

Tracy J. Willi, The New Texas Discovery Rules: What the Appellate Lawyer Needs to Know, Appellate Advocate Newsletter, Texas State Bar Appellate Practice Section (July 1999)

Tracy J. Willi, What to Do Once You Get There: Motions, Brief Writing, Rehearing, Appellate Institute - Practice Before the First and Fourteenth Court of Appeals, Houston Bar Association Appellate Practice Section (1999)

Tracy J. Willi, Civil Appellate Update, Houston Bar Association, Appellate Practice Section Meeting (March 1999)

Tracy J. Willi, Civil Appellate Update, Houston Bar Association, Appellate Practice Section Meeting (January 1997)

Helen Cassidy, JoAnn Storey, and Tracy J. Willi, Preservation of Error - Precharge, 10th Annual Advanced Civil Appellate Practice Course, Texas State Bar, Appellate Practice Section (September 1996)

Representative Cases

CAO Group, Inc. v. Dentlight, Inc.  Willi Law Firm is local counsel for Utah-based CAO Group, Inc., a leading OEM company in dental devices and materials for the last 10 years.  CAO Group pioneered the LED curing light and diode laser technologies in dentistry.  CAO Group sued Dentlight, Inc. for infringement of eleven of its U.S. Patents in the U.S. District Court for the Eastern District of Texas, Tyler Division.

Mavrix Photo, Inc. v. Popscreen, Inc.  Willi Law Firm represented Houston-based Popscreen, Inc. in a copyright infringement lawsuit filed in the United States District Court for the Southern District of Texas, Houston Division.  The case against Willi Law Firm's client was voluntarily dismissed by the Plaintiff with no settlement payments being made by Popscreen.

Cerium Laboratories LLC v. Semi Analytics & Reid Powers.  Willi Law Firm represented Cerium Laboratories LLC in an action for suit on a sworn account, breach of contract, breach of fiduciary duty and misappropriation of trade secrets, fraud, unjust enrichment, and constructive trust, and a declaratory judgment to declare the rights and other legal relations by and between Plaintiff and Defendants filed in the U.S. District Court for the Western District of Texas, Austin Division.  The case was settled to the mutual satisfaction of the parties.

Uniloc Luxembourg S.A. et al. v. OriginLab Corporation.  Willi Law Firm is lead counsel for Masschusetts-based OriginLab Corporation in a patent infringement lawsuit filed in the U.S. District Court for the Eastern District of Texas, Tyler Division. The patent in suit, U.S. Patent No. 5,579,222, relates to distributed license administration system using a local policy server to communicate with a license server and control execution of computer programs.  OriginLab is a licensed user of Flexera Software, LLC's FlexNet Licensing and FlexNet Publisher software.

ICON Health & Fitness, Inc. v. Johnson Health Tech North America, Inc.  Willi Law Firm is local counsel for Utah-based ICON Health & Fitness, Inc., one of the world’s largest developers, manufacturers, and marketers of fitness equipment with brands that include NordicTrack, ProForm, Weider, Reebok and Gold’s Gym, in a patent infringement lawsuit filed in the U.S. District Court for the Eastern District of Texas, Marshall Division.  The patents in suit, U.S. Patent Nos. 7,702.719 and 8,298,123 relate to improved methods, systems, and programs for controlling exercise machines.

InNova Patent Licensing, LLC v. Ipswitch, Inc.  Willi Law Firm is local counsel for Massachustts-based Ipswitch, Inc. in a patent infringement lawsuit filed in the U.S. District Court for the Eastern District of Texas, Marshall Division.  The patent in suit, U.S. Patent No. 6,018,761, relates to a system for adding information obtained from sources external to an electronic mail transport process to electronic email messages.

Warner Bros. Home Entertainment Inc. v. Fannix, Inc. et al.  Willi Law Firm represented the Texas-based defendants in a copyright infringement case filed in the U.S. District Court for the Central District of California.  Willi Law Firm's clients were accused of distributing, promoting, offering for sale, and selling counterfeit copies of various copyrighted works owned by the plaintiff on Amazon.com.

Uniloc Luxembourg S.A. et al. v. Ipswitch, Inc.  Willi Law Firm is local counsel for Massachusetts-based Ipswitch, Inc. in a patent infringement lawsuit filed in the U.S. District Court for the Eastern District of Texas, Tyler Division.  The patent in suit, U.S. Patent No. 7,024,696, relates to a method and a system for prevention of piracy of software applications via a communications network, such as the Internet.

Ramirez v. Freddie Records, Inc.  Willi Law Firm represented the appellees, copyright owners, in an appeal from a U.S. District Court for the Southern District of Texas judgment in their favor. The case involved copyright infringement of musical compositions and sound recordings. The U.S. Court of Appeals for the Fifth Circuit affirmed the liability and damages findings and remanded the case for further consideration of an additional award of attorney’s fees.

Tan v. Di Napoli.  Willi Law Firm represented the appellee in an appeal from a Travis County district court. The case involved an executory contract for the purchase of a luxury home in Austin, Texas. On appeal, the purchaser of the luxury home sought to recover over $1 million in additional statutory damages pursuant to section 5.085 of the Texas Property Code. In an opinion written by Chief Justice J. Woodfin Jones, joined by Justice Jeff L. Rose and Justice Melissa Goodwin, the Third Court of Appeals agreed with Willi Law Firm’s argument that no additional damages were available to the purchaser under the facts of this case.

Global Licensing N.V. v. The Jewelry Channel, Inc. d/b/a/ Liquidation Channel.  Willi Law Firm represented Global Licensing N.V., a Seychelles company in a trademark infringement lawsuit filed in the U.S. District Court for the Western District of Texas, Austin Division.  The dispute relates to protection of Global Licensing's federally-registered trademark ZULTANITE®.  The case was settled to the mutual satisaction of the parties.

Innovative Automation LLC v. Audio and Video Labs, Inc. d/b/a Disc Makers et al.  Willi Law Firm represented Formats Unlimited, Inc., Kunaki LLC, U.S. Digital Media, Inc., and Vervante Corporation in a patent infringement lawsuit, which was filed in the U.S. District Court for the Eastern District of Texas, Tyler Division, against multiple defendants.  The patent in suit related to computer-implemented methods and a system for digital data duplication systems using networks to fully automate the process from customer order processing to delivery.  Willi Law Firm filed a request for ex parte reexamination of the patent in suit, U.S. Patent No. 7,174,362, and for a continuation of the patent in suit, U.S. Patent No. 7,392,283, on February 14, 2012, in which Willi Law Firm requested the U.S. Patent and Trademark Office to reexamine all claims of the '362 and '283 patents in view of ten different prior art U.S. patents.  On March 1, 2012 and on May 11, 2012, the U.S. Patent and Trademark Office determined that a substantial new question of patentability affecting all claims of the '362 and '283 patents, respectively, was raised by Willi Law Firm's request for ex partereexamination and, therefore, granted Willi Law Firm's request for ex parte reexamination of the '362 and '283 patents.  On May 17, 2012, the U.S. Patent and Trademark Office issued an office action rejecting claims 1, 2, 4, 7 and 8 of the '362 patent in view of the submitted prior art.  On May 31, 2012, U.S. Magistrate Judge John D. Love issued a report and recommendation that the motion to dismiss pursuant to Federal Rules of Civil Procedure 12(b)(2) and 12(b)(3) filed by Willi Law Firm on behalf of its client, Formats Unlimited, Inc., should be granted and that that the patent infringement lawsuit against Willi Law Firm's client should be dismissed for improper venue.  On September 27, 2012, Judge Leonard Davis adopted the recommendation of Magistrate Judge Love and ordered the patent infringement case against Willi Law Firm's client, Format's Unlimited, dismissed for improper venue.  The case against Willi Law Firm's remaining clients was settled to the mutual satisfaction of the parties.  On February 20, 2013, the U.S. Patent and Trademark Office issued an office action rejecting all 14 claims of the '283 patent in view of the submitted prior art.

Quanta Services, Inc. et al. v. Liveline Solutions, Inc. et al.  Willi Law Firm represented the Canadian defendants in a patent infringement lawsuit, which was filed in the U.S. District Court for the Southern District of Texas, Houston Division.  The patent in suit, U.S. Patent No. 5,538,207, involved rotating and telescoping robotic arm operable by remote control for temporarily supporting and repositioning energized power lines to enable repair or replacement of transmission or distribution poles, crossarms, insulators, insulator pins and the like, or to relocate conductors to facilitate their replacement.  The case was settled to the mutual satisfaction of the parties.

N5ZX Aviation, Inc. v. Bell et al.  Represented Nashville, Tennessee-based defendants in a case involving allegations of fraud, fraudulent inducement, fraudulent concealment, negligence, negligent misrepresentation, tortious infererence with prospective economic advantage, conversion, false claims of good and clear title, false, misleading, and deceptive advertising, breach of implied warranty of fitness for a particular purpose, and breach of implied warranty of merchantability relating to the plaintiff's purchase of an airplane in Tennessee.  Judge Sam Sparks of the U.S. District Court for the Western District of Texas granted Willi Law Firm's motion to dismiss for lack of personal jurisidiction and ordered the case transferred to Tennessee.  The Court further determined that alleged misrepresentations involving the purchase of the airplane were “clearly not fraud” and could not form the basis of personal jurisdiction in Texas over Willi Law Firm's client.  Further, the Court ruled that the plaintiff's allegations of personal jurisdiction focused on alleged misrepresentations made to two individuals, but the alleged damages were not incurred by those individuals.  Instead, the Court ruled that any alleged damages in the case were incurred by their newly formed corporation, which was not formed until after the alleged misrepresentations were made.  The Court further ruled that telephone, facsimile, and letter communications between Tennessee and Texas during the negotiation of the contract did not constitute sufficient contacts for personal jurisdiction in Texas.  The Court also recognized that the physical address where one may send or retrieve an email is no more fixed to a particular location than the address where one may send or receive a telephone call.  The Court also ruled that the Texas resident initiated the purchase of the airplane outside of Texas by contacting a company outside Texas that does not direct marketing to Texas.  The Court made an additional finding that even if the Court had personal jurisdiction in Texas over Willi Law Firm's client, the plaintiff's fraud claims would be dismissed for failure to plead with specificity.  The Court astutely summed up the plaintiff's case by stating, “it simply seems like a case of buyer’s remorse [that] should have been pursued, if at all, in Tennessee.”

Pool v. Diana.  Represented the executrix of the decedent's estate in an appeal to the Texas Third Court of Appeals in Austin.  The Court issued an opinion in favor of Willi Law Firm's client upholding Travis County Probate Court No. 1's rulings on motions for summary judgment regarding testamentary capacity, alleged oral conveyance of real property, forgery, and undue influence.  The Court further affirmed the probate court's award of $109,500 in sanctions against the opposing party and her attorneys.  Finally, the Court awarded an additional $30,000 in penalties against the opposing party on appeal.  See No. 03-08-00363-CV (Tex. App.—Austin 2010, pet. denied) (Mem. Op.)

Shook v. WaldenExtraordinary proceeding to determine sufficiency of supersedeas bond.  The Court's opinion is reported at 304 S.W.3d 910 (Tex. App.—Austin 2010, no pet.).

AIC Management v. Crews.  Represented the plaintiff in a jury trial to determine entitlement to funds held in the court registry from an eminent domain proceeding. AIC Management purchased property at a tax foreclosure sale for $1,000. Several years later, the City of Houston filed an eminent domain proceeding to re-purchase the land for more than $250,000 for the expansion of the George Bush Intercontinental Airport. The dispute was between the previous owners and the purchaser at the tax foreclosure sale. Willi Law Firm was hired after the case had been lost at the trial court and at the court of appeals. Willi Law Firm appealed the case to the Texas Supreme Court, won the appeal, and re-tried the case to a jury in Harris County, winning with a unanimous verdict.  The Texas Supreme Court's opinion is reported at AIC Management v. Crews, 246 S.W.3d 640 (Tex. 2008).

Norra v. Harris County and State of Texas.  Represented a debtor in bankruptcy seeking to establish homestead exemption for a 5.0+ acre property used as a mobile home park.  Harris County and the State of Texas hold a $1.0 million judgment against the debtor which they sought to collect by executing against the property.  After a full trial, Judge Marvin Isgur issued an opinion finding the entire 5.0+ acre mobile home park, and all of its mobile homes, to be homestead exempt.  The case is reported at 421 B.R. 782 (S.D. TX 2009).

Bechtel Corp. v. CITGO Products Pipeline Co.  Represented CITGO in a jury trial to recover damages from contractors for damage to a pipeline.  The jury awarded over $2.0 million in damages based, in part, upon violations of the Texas One-Call statute.  The contractors appealed the case and most of the award was upheld.  The case is reported at 271 S.W.3d 898 (Tex. App.—Austin 2008).

Potcinske v. McDonald Property Investments.  Real property dispute before the Texas First Court of Appeals in Houston.  The Court's opinion is reported at 245 S.W.3d 526 (Tex. App.—Houston [1st Dist.] 2007, no pet.).

Tempest Broadcasting Corp. v. Imlay.  Interlocutory appeal of an order dismissing case for lack of person jurisdiction.  The Court's opinion is reported at 150 S.W.3d 861 (Tex. App.—Houston [14th Dist.] 2004, no pet.).

Rivera v. Houston I.S.D.  Appeal before U.S. Court of Appeals for the Fifth Circuit for wrongful death of a child due to a state-created danger.  The Court's opinion is reported at 349 F.3d 244 (5th Cir. 2003).

Lewis v. Fresne.  Appeal before the U.S. Court of Appeals for the Fifth Circuit regarding dismissal for lack of personal jurisdiction.  The Court's opinion is reported at 252 F.3d 352 (5th Cir. 2001).

Daily v. Gusto Records, Inc.  Appeal before the United States Court of Appeals for the Sixth Circuit involving issues of fraud and conspiracy regarding payment of publisher royalties for exploitation of George Jones master recordings.  The Court's opinion is reported at 14 Fed. Appx. 579, 582 (6th Cir. 2001) (Mem. Op.).

Torrington Co. v. Stutzman. Represented Bell Helicopter before the Texas Supreme Court in an appeal concerning joint liability and punitive damages in a multiple wrongful death action. The Court's opinion is reported at 36 S.W.2d 511 (Tex. 2000).

Dubai Petroleum Co. v. Kazi.  Appeal before the Texas Supreme Court involving subject matter jurisdiction of Texas courts over foreign cases involving wrongful death.  The Court's opinion is reported at 12 S.W.3d 71 (Tex. 2000).

Gonzales v. Trinity Industries, Inc.  Car accident involving a condition on a property preventing proper line of sight for incoming traffic.  The Court's opinion is reported at 7 S.W.3d 303 (Tex. App.—Houston [1st Dist.] 1999, pet. denied).

Huynh v. R. Warehousing & Port Services.  The Court's opinion is reported at 973 S.W.2d 375 (Tex. App.—Tyler 1998, no pet.).

Smith v. Medical and Surgical Clinic Ass’n.  Appeal before the U.S. Court of Appeals for the Fifth Circuit of a summary judgment granted pursuant to the Federal Employers’ Liability Act (FELA).  The Court's opinion is reported at 118 F.3d 416 (5th Cir. 1997).

Torres v. Caterpillar, Inc.  Represented Caterpillar in a products liability case defending a favorable jury verdict.  The Court's opinion is reported at 928 S.W.2d 233 (Tex. App.—San Antonio 1996, writ denied).

Burlington Northern R. Co. v. Taylor.  Represented Burlington Northern in an injury case involving punitive damages.  The Court's opinion is reported at 916 S.W.2d 12 (Tex. App.—Houston [1st Dist.] 1995, no writ).