Overview

Terrence "Terry" Wikberg is a litigator and an intellectual property (IP) attorney in Holland & Knight's Washington, D.C., office. Mr. Wikberg's practice focuses on patent, trademark, trade dress and trade secret litigation, as well as strategic counseling, patent prosecution and IP portfolio development and acquisition. Mr. Wikberg's practice also includes strategic client counseling in various complex corporate scenarios, including mergers and acquisitions (M&A), risk management and value generation, and IP monetization.

Mr. Wikberg has extensive litigation experience representing plaintiffs and defendants at the U.S. International Trade Commission (ITC) and U.S. federal district courts throughout the country. He has represented U.S.-, European- and Asian-based clients in a wide variety of technological areas, including industrial and mining technologies, oil and gas drilling technologies, manufacturing workflow technologies, chemical vapor deposition technologies – including lab-grown diamond manufacture, green technologies, welding and cutting equipment, aircraft equipment and propulsion systems, ballistic technologies, power supplies and power generation equipment, laser manufacturing systems, laser vision correction systems, mobile communications and networks, fiber optics, camera and projector optics, video gaming technology, data encryption, sporting goods and equipment, golf balls and golf equipment, consumer electronics, medical devices, robotic, automated and semi-autonomous systems and manufacturing cells, as well as virtual and augmented reality training systems and digital media storage devices.

Prior to joining Holland & Knight, Mr. Wikberg was an IP attorney for an international law firm in its Washington, D.C., office.

Before attending law school, Mr. Wikberg had a successful career as director of engineering in the aviation industry. He supervised product development, implementation and support for passenger-to-cargo conversion modification kits for large commercial aircraft, which included the design and implementation of significant exterior and interior structural modifications, hydraulic actuation and control systems, smoke detection systems and cargo restraint systems. In that role, his experience also included obtaining Federal Aviation Administration (FAA) supplemental type certificates for numerous modifications on multiple aircraft type, and assisting with incident investigation. Mr. Wikberg’s aviation experience also includes a detailed understanding of aircraft structural and aerodynamic design, aircraft avionics and controls systems, and aircraft power plants.

Mr. Wikberg also serves as an adjunct professor of Patent Law in the Master in Science of Law/Patent Law Program at the University of Maryland Francis King Carey School of Law.

Representative Experience

  • Served as counsel for a world-leading manufacturer of oil and gas drilling technologies in a multipatent case concerning diamond impregnated compacts and cutters used in industrial oil and gas drilling applications; secured an extremely favorable resolution early in the investigation resulting in the acquisition of industry critical technology
  • Served as counsel for a technology-leading company in the industrial lighting space concerning LED light components and luminaires and secured an early dismissal with prejudice, avoiding significant fees or client disruption
  • Served as counsel for a world-leading manufacturer of testing and measurement equipment in a two-patent case concerning multidomain test and measurement instruments; cases were dismissed after obtaining a favorable stipulated exclusion order
  • Defended a foreign-based smartphone manufacturer in a four-patent investigation relating to smartphones, including the chipsets, user interface and software used in those smartphones; the patents at issue were owned by FlashPoint Technology Inc., a non-practicing entity founded in 1996 as a spinoff of Apple Computer Inc.; in the U.S. International Trade Commission's (ITC) final ruling, the client was cleared of all patent infringement allegations, and FlashPoint chose not to appeal the decision
  • Defended a foreign-based smartphone manufacturer in a six-patent investigation relating to mobile devices incorporating haptics technologies; the patent owner, Immersion Corp., voluntarily withdrew its complaint just weeks before trial
  • Defended a foreign-based smartphone manufacturer in an investigation in which FlashPoint Technology Inc. asserted that all of the client's (and most of the rest of the smartphone market's) Android and Windows-based phones infringed three patents, relating primarily to digital imaging functionality and device capability querying technologies; almost all respondents, including Nokia and RIM, settled before the trial; the judge found that none of the asserted patents were infringed, FlashPoint failed to prove a domestic industry for its patents, and one of Flashpoint's patents was invalid; ITC and the U.S. Court of Appeals for the Federal Circuit affirmed
  • Aided in obtaining the first-ever delay in the imposition of an ITC exclusion order for a foreign smartphone manufacturer, which allowed time for the client to obtain approval to import design around devices; additionally defended the client in an investigation in which Apple asserted that its smartphones infringed 10 patents relating to operating systems software and software and techniques by which a user interacts with a touch-screen; obtained a favorable outcome when Apple was forced to withdraw its claims as to six patents before trial; of the remaining four patents, the judge found two not infringed (and the ITC affirmed) and two infringed (the ITC affirmed for one and reversed for the other); matter was terminated on appeal under terms of global settlement
  • Represented a complainant in the rubber and polymer industry in two separate  two-patent investigations relating to rubber antidegradant additives for products such as vehicle tires
  • Representing a complainant in the welding power supply and consumable space in an ITC action brought against five accused infringers in connection with patents involving welding technologies
  • Represented a U.S. farm and industrial equipment manufacturer in a trade dress infringement action brought against foreign importer of agricultural tractors; litigation resulted in the issuance of a limited exclusion order

  • Co-lead trial counsel for a European mining company in the U.S. District Court for the Eastern District of Texas involved mined and processed minerals, ceramics and their use in green energy roofing technologies
  • Co-lead trial counsel for world leading LED and LED luminaire manufacturer in the Western District of Texas against claims of patent infringement for wide-area industrial illumination, trade secret misappropriation and false inventorship on 27 client patents, and secured numerous victories on summary judgment resulting in an extremely favorable settlement
  • Lead trial counsel representing a U.S.-based lab-grown diamond manufacturing against multiple separate defendants in the Southern District of New York asserting patents related to manufacturing diamonds via chemical vapor deposition and diamond annealing, and secured numerous favorable settlements and licenses
  • Lead counsel for a multinational U.S.-based manufacturer of power generation and transmission technologies in the Eastern District of Texas against a multipatent claim related to LED technologies, and obtained a dismissal of all claims with no settlement or license
  • Lead counsel for a multinational  U.S.-based manufacturer of power generation and transmission technologies in the District of Delaware against a multipatent claim  related to LED and LED luminaire technologies, and secured an early dismissal of all claims with no settlement
  • Counsel for a world-wide bulk retailer in a 10 patent declaratory judgment action against Acushnet involving the client's new golf balls, with the patents covering ball construction, chemistry and aerodynamic properties and performance in the Western District of Washington; the litigation settled prior to the claim construction hearing
  • Trial counsel for an Asian smartphone manufacturer in a patent case involving haptics technologies in the District of Delaware and in the ITC; forced the complainant to withdraw the case two weeks before trial
  • Trial counsel for an Asian smartphone manufacturer in multijurisdictional patent fight related to camera functionality in smart phones, both hardware and software; obtained trial wins in both ITC cases in the District of Delaware and the Eastern District of North Carolina, including appeal in the U.S. Court of Appeals for the Federal Circuit
  • Lead counsel for a mobile communication and GPS location provider in patent case involving GPS location services using multigenerational mobile communication protocols; obtained favorable settlement on the eve of trial in the Eastern District of Texas and secured significant indemnification contribution from prior company in interest
  • Represented a leading U.S. welding company in a patent infringement and antitrust action brought by Sidergas related to weld wire packaging technology in the District of Delaware; resulted in a dismissal of claims against the client
  • Representing a leading U.S. welding company in patent infringement and antitrust case involving multiple patents related to welding power supplies in the Northern District of Ohio
  • Representing a leading U.S. welding company in a patent infringement action brought against Kiswel related to weld wire and welding consumable technology in the Northern District of Ohio; the litigation was settled
  • Representing a leading U.S. welding company in a patent infringement action brought against Hyundai related to weld wire and welding consumable technology in the Northern District of Ohio; the litigation was settled
  • Representing a leading U.S. welding company in a patent infringement action brought against ESAB related to weld wire and welding consumable technology in the Northern District of Ohio
  • Representing a leading U.S. welding company in a patent infringement action brought against Sidergas related to weld wire and welding consumable technology in the Northern District of Ohio
  • Represented a leader in fleet-based tracking systems in patent litigation brought against DriveOK, WebTech Wireless and Xirgo Technologies in a patent infringement action related to onboard vehicle diagnostic systems in the Eastern District of Texas
  • Represented a communication encryption technology client in a patent infringement action brought by Perimeter related to data encryption technology in the District of Massachusetts; the litigation was settled
  • Represented an Asian-based sports company in multipatent infringement action against Acushnet, makers of Titleist golf balls in the District of Delaware; the client received a very favorable settlement two weeks prior to trial
  • Represented a leading U.S. welding company in a patent, trademark and copyright infringement lawsuit brought against Lisco and Phoenix Welding related to the infringement of the client's welding related technology in the Central District of California; obtained a favorable settlement early in the litigation
  • Represented a U.S. metal fabrication and cutting client, against CDL and Inman for trademark infringement occurring at a tradeshow; obtained a default judgment in favor of the client in the District of Nevada
  • Represented a leading U.S. welding company for trademark infringement; litigation settled favorably early in litigation in the Northern District of Ohio
  • Represented two foreign manufacturers of optical projectors in a patent infringement action brought by Light Valve, related to high-definition projectors and LCD displays; litigation was settled in the Northern District of Georgia
  • Represented a U.S. rubber and polymer manufacturer against Kumho and Sinorghem in a patent infringement action related to rubber antidegradants for rubber products, such as tires in the Northern District of Ohio
  • Represented a leading U.S. welding company against Travers Tool in a trademark infringement action related to the client's welding technology; litigation settled favorably in early stages of litigation in the Northern District of Ohio
  • Represented a leading U.S. welding company against ATD Tools in a trademark infringement action related to the client’s welding technology; settled favorably in early stages of litigation in the Northern District of Ohio
  • Represented an Asian manufacturer of laser vision correction machines in patent litigation involving electronic control of laser vision correction devices in the Northern District of California; secured a very favorable settlement
  • Represented an Asian sports equipment manufacturer in a patent litigation suit  brought against Callaway Golf related to golf ball technology; litigation settled in discovery in the Northern District of Georgia
  • Represented a leading U.S. welding company in a patent infringement action brought against National Standard related to weld wire and welding consumable technology

Credentials

Education
  • University of Maryland School of Law, J.D., summa cum laude
  • Embry-Riddle Aeronautical University, B.S., Aeronautical Engineering
Bar Admissions/Licenses
  • District of Columbia
Court Admissions
  • U.S. Patent and Trademark Office
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the District of Maryland
Memberships
  • Maryland Law Review, 1998-2000
Honors & Awards
  • Order of the Coif

Publications

Speaking Engagements

News