Photo of Warner  J. Delaune
  • PRACTICE FOCUS
  • INDUSTRIES+
  • EDUCATION+
    • Louisiana State University Law Center
      J.D., 1991
    • Louisiana State University
      B.S. in Mechanical Engineering, 1986
  • ADMISSIONS+
    • Louisiana
    • U.S. Court of Appeals for the Fifth Circuit
    • U.S. Patent and Trademark Office
    • U.S. District Court, Eastern District of Louisiana
    • U.S. District Court, Middle District of Louisiana
    • U.S. District Court, Western District of Louisiana
  • CLERKSHIP+

Warner Delaune protects clients’ intellectual property (IP) rights when they bring products and services to the market and defends them against infringement claims from others. As a patent attorney and IP specialist, he helps clients advance their business interests by pursuing the right IP protection for their needs and developing strategies to maximize their position in the competitive landscape. He is a former mechanical engineer and a registered patent attorney licensed to practice before the United States Patent and Trademark Office. He is fluent in the business and technical language of his clients, whether it involves complex agreements or computer-aided design (CAD) documents.

In addition to patent protection and defense, Warner’s experience offers a full spectrum of intellectual property services including federal trademark and copyright preparation and prosecution, as well as negotiation and drafting of license agreements, joint ventures and other technology transactions. He is a one-stop shop for all his clients’ intellectual property needs.

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Warner Delaune protects clients’ intellectual property (IP) rights when they bring products and services to the market and defends them against infringement claims from others. As a patent attorney and IP specialist, he helps clients advance their business interests by pursuing the right IP protection for their needs and developing strategies to maximize their position in the competitive landscape. He is a former mechanical engineer and a registered patent attorney licensed to practice before the United States Patent and Trademark Office. He is fluent in the business and technical language of his clients, whether it involves complex agreements or computer-aided design (CAD) documents.

In addition to patent protection and defense, Warner’s experience offers a full spectrum of intellectual property services including federal trademark and copyright preparation and prosecution, as well as negotiation and drafting of license agreements, joint ventures and other technology transactions. He is a one-stop shop for all his clients’ intellectual property needs.

Warner’s clients cover a broad range of industries, including:

  • Medical and biomechanical devices
  • Cancer diagnostic methods
  • Sporting goods
  • Firearms
  • Watercraft
  • Computer networking
  • Wastewater treatment
  • Recycling processes
  • Metal cleaning and coating
  • Electromechanical control systems
  • Oil and gas exploration and production
  • Coastal erosion mitigation systems
  • Manufacturing equipment

He counsels clients on U.S. intellectual property laws and protection, and he manages a number of international patent and trademark portfolios. He coordinates with counsel in foreign countries on an almost daily basis to ensure that his clients’ overseas IP assets are strong and consistent with their business objectives.

Before starting his law career, Warner worked with Texas Instruments, Inc., in the Defense Systems and Electronics Group. He designed infrared systems for military vehicles and participated in flight testing of those systems on both fixed wing aircraft and helicopters.

Experience

  • Secured international patent protection for a car audio speaker system after a hearing in Munich, Germany, before the European Patent Organization (EPO).
  • Institution of an inter partes review (IPR) at the U.S. Patent Trial and Appeal Board against a patent held by a competitor to the client, which caused a favorable settlement of a patent infringement lawsuit against the client.
  • Obtained a judicial order protecting a large health care client against intrusive inspections and discovery related to a copyright infringement action brought by a software company.
  • Successfully avoided a patent infringement action against a client by challenging the validity of the asserted patent based on other patents in existence prior to the competitor’s filing date.
  • Negotiated, drafted and closed a large equity investment in a client’s company by a large publicly traded competitor, which included a broad technology license to the investor in the energy industry.
  • Negotiated, drafted and closed an exclusive license agreement for a client’s downhole tool patent to a major oil and gas supplier.
  • Resolved trademark opposition proceeding in the U.S. Trademark Trial and Appeal Board leading to a favorable sale of the client’s trademarks to the other party.

Insights

Publications
  • "PTAB Issues Precedential Decision on Joinder Under 35 USC Section 315(c)," IAM Weekly International Report (March 2019) Author
  • "USPTO Guidance on Subject-Matter Eligibility Following Berkheimer Decision," IAM Weekly International Report (May 2018) Author
  • "Tribal Sovereign Immunity in Patent Cases Questioned," IAM Weekly International Report (November 2017) Author
  • "Federal Circuit Reverses District Court Decision on Exceptional Case and Attorneys' Fees," IAM Weekly International Report (June 2017) Author
  • "What Fluctuating Oil Prices Means For Patent Infringement Lawsuits," Oil & Gas Financial Journal (July 2016) Author
Speaking Engagements
  • "Critical Issues in Licensing University Technologies," New Orleans BioInnovation Center (August 2016) Speaker
  • "Subject Matter Conflicts in Patent and Trademark Cases," Tennessee Intellectual Property Law Association (May 2016) Speaker
  • "Patent Law Landscape - Recent Shifts and What You Need to Know," New Orleans BioInnovation Center (June 2015) Speaker
News

Memberships & Affiliations

Professional

  • American Bar Association, Intellectual Property Section
  • Louisiana State Bar, Intellectual Property Section
  • American Intellectual Property Law Association

Civic

  • Louisiana Business and Technology Center at Louisiana State University - Advisory Board & Member (2006-2008)
  • Louisiana State University, Engineering Graphics - Past Assistant Instructor

Recognition

  • AV Preeminent Peer Review Rated, Martindale-Hubbell
  • Intellectual Property Law (2009-2020), Trademark and Technology Law (2009-2020), The Best Lawyers in America

Industries

Education

  • Louisiana State University Law Center
    J.D., 1991
  • Louisiana State University
    B.S. in Mechanical Engineering, 1986

Admissions

  • Louisiana
  • U.S. Court of Appeals for the Fifth Circuit
  • U.S. Patent and Trademark Office
  • U.S. District Court, Eastern District of Louisiana
  • U.S. District Court, Middle District of Louisiana
  • U.S. District Court, Western District of Louisiana
  • Secured international patent protection for a car audio speaker system after a hearing in Munich, Germany, before the European Patent Organization (EPO).
  • Institution of an inter partes review (IPR) at the U.S. Patent Trial and Appeal Board against a patent held by a competitor to the client, which caused a favorable settlement of a patent infringement lawsuit against the client.
  • Obtained a judicial order protecting a large health care client against intrusive inspections and discovery related to a copyright infringement action brought by a software company.
  • Successfully avoided a patent infringement action against a client by challenging the validity of the asserted patent based on other patents in existence prior to the competitor’s filing date.
  • Negotiated, drafted and closed a large equity investment in a client’s company by a large publicly traded competitor, which included a broad technology license to the investor in the energy industry.
  • Negotiated, drafted and closed an exclusive license agreement for a client’s downhole tool patent to a major oil and gas supplier.
  • Resolved trademark opposition proceeding in the U.S. Trademark Trial and Appeal Board leading to a favorable sale of the client’s trademarks to the other party.
Publications
  • "PTAB Issues Precedential Decision on Joinder Under 35 USC Section 315(c)," IAM Weekly International Report (March 2019) Author
  • "USPTO Guidance on Subject-Matter Eligibility Following Berkheimer Decision," IAM Weekly International Report (May 2018) Author
  • "Tribal Sovereign Immunity in Patent Cases Questioned," IAM Weekly International Report (November 2017) Author
  • "Federal Circuit Reverses District Court Decision on Exceptional Case and Attorneys' Fees," IAM Weekly International Report (June 2017) Author
  • "What Fluctuating Oil Prices Means For Patent Infringement Lawsuits," Oil & Gas Financial Journal (July 2016) Author
Speaking Engagements
  • "Critical Issues in Licensing University Technologies," New Orleans BioInnovation Center (August 2016) Speaker
  • "Subject Matter Conflicts in Patent and Trademark Cases," Tennessee Intellectual Property Law Association (May 2016) Speaker
  • "Patent Law Landscape - Recent Shifts and What You Need to Know," New Orleans BioInnovation Center (June 2015) Speaker
News

Professional

  • American Bar Association, Intellectual Property Section
  • Louisiana State Bar, Intellectual Property Section
  • American Intellectual Property Law Association

Civic

  • Louisiana Business and Technology Center at Louisiana State University - Advisory Board & Member (2006-2008)
  • Louisiana State University, Engineering Graphics - Past Assistant Instructor
  • AV Preeminent Peer Review Rated, Martindale-Hubbell
  • Intellectual Property Law (2009-2020), Trademark and Technology Law (2009-2020), The Best Lawyers in America