William, a partner in the firm’s Intellectual Property Prosecution, Transactions & Portfolio Management practice, counsels clients on an array of patent and trademark issues, helping them manage, protect and capitalize on their IP assets. He prepares and prosecutes domestic and international patent and trademark applications, conducts due diligence, prepares legal opinions and represents clients’ interests in post-grant review proceedings.
Prior to practicing law, William spent over a decade as a laboratory physicist at Oak Ridge National Laboratory and the Y-12 National Security Complex in Oak Ridge, Tennessee. He also served as an adjunct professor in the Materials Science and Engineering Department at the University of Tennessee.
Selected by peers for inclusion in The Best Lawyers in America® for 10 years or longer.
Focus Areas
A sampling of William’s experience includes:
- Representing corporations, entrepreneurs, individuals and startups with regard to the preparation and prosecution of patent applications with a focus on securing patent protection in a timely, cost-effective manner to protect technical innovations.
- Developing worldwide strategies for protecting intellectual property assets and portfolios.
- Managing global patent portfolios or portfolio segments for multinational corporations.
- Serves as outside U.S. patent counsel for an $8 billion travel technology company.
- Serves as outside U.S. patent counsel for a $6 billion semiconductor foundry.
- Serves as outside U.S. patent counsel for a division of a $9 billion specialty pharmaceutical company.
- Procuring over 1,000 U.S. patents protecting various technical innovations developed by a high technology client, including securing protection for inventions covering core technical innovations.
- Responding to several thousand domestic and foreign Office Actions.
- Prosecuting to grant several thousand U.S. patents and their foreign equivalents.
- Advising clients on effective replies to cease-and-desist letters.
- Preparing broadening reissue and continuation reissue applications to extend the scope of client patent protection.
- “Obviousness Rejections Reversed Based on Examiner’s Mischaracterization of Prior Art,” Thompson Hine Intellectual Property Prosecution, Transactions & Portfolio Management Update, August 2026
- “PTAB Reverses Section 101 Rejection Based on Inconsistent Claim Construction,” Thompson Hine Intellectual Property Prosecution, Transactions & Portfolio Management Update, June 2026
- “Contrasting PTAB Analyses of Patent Eligibility in Recent Semiconductor Cases,” Thompson Hine Intellectual Property Prosecution, Transactions & Portfolio Management Update, April 2026
- “Navigating and Overcoming Section 101 Rejections,” Thompson Hine Artificial Intelligence Update, January 2026
- “Revised USPTO Guidance Clarifies Inventorship Standards for AI-Assisted Inventions,” Thompson Hine Artificial Intelligence Update, December 2025
- “USPTO Launches Streamlined Claim Set Pilot Program: A New Path to Faster Examination,” Thompson Hine Intellectual Property Update, November 2025
- “USPTO Director Squires Defends Expansive Patent Eligibility,” Thompson Hine Intellectual Property Update, October 2025
- “Federal Circuit Leaves Intact Ruling on Automated Dumbbell Patent Eligibility,” Thompson Hine Intellectual Property Update, October 2025
- “Federal Circuit Clarifies Patent Eligibility for Automated Dumbbell Technology,” Thompson Hine Intellectual Property Update, August 2025
- “USPTO Unveils New Web-Based Intellectual Property Marketplace Platform,” Thompson Hine COVID-19 Update, May 2020
- “RIM v. NTP, Yet Again: BlackBerry’s ill-fated patent dispute with NTP takes a final turn,” IEEE Spectrum, July 2010
- Selected for inclusion in The Best Lawyers in America® 2018 to 2027 for Patent Law and Technology Law
Professional Associations
- Institute of Electrical and Electronics Engineers
- Intellectual Property Owners Association
- International Trademark Association
- Northern Kentucky University Research Foundation, Board of Directors, 2016-2019
- All Ohio Annual Institute on Intellectual Property, Planning Committee, 2015-2016
Professional Activities
- National Patent Application Drafting Competition, Judge, 2025, 2026
- Supreme Court of Ohio Lawyer to Lawyer Mentoring Program, Mentor, 2017-2024
- IPO Software Related Inventions Committee, member
Education
- University of Tennessee College of Law, J.D., 1999
- University of North Carolina at Chapel Hill, Ph.D., 1986
- Emory and Henry College, B.S., 1980
Bar Admissions
- Ohio
Court Admissions
- U.S. Patent and Trademark Office
- Obviousness Rejections Reversed Based on Examiner’s Mischaracterization of Prior Art,
Intellectual Property Prosecution, Transactions & Portfolio Management Update
, August 6, 2026 - PTAB Reverses Section 101 Rejection Based on Inconsistent Claim Construction,
Intellectual Property Prosecution, Transactions & Portfolio Management Update
, June 15, 2026 - Contrasting PTAB Analyses of Patent Eligibility in Recent Semiconductor Cases,
Intellectual Property Prosecution, Transactions & Portfolio Management Update
, April 1, 2026 - Navigating and Overcoming Section 101 Rejections,
Artificial Intelligence Update
, January 30, 2026 - Revised USPTO Guidance Clarifies Inventorship Standards for AI-Assisted Inventions,
Artificial Intelligence Update
, December 1, 2025 - USPTO Launches Streamlined Claim Set Pilot Program: A New Path to Faster Examination,
Intellectual Property Update
, November 3, 2025 - USPTO Director Squires Defends Expansive Patent Eligibility,
Intellectual Property Update
, October 22, 2025 - Federal Circuit Leaves Intact Ruling on Automated Dumbbell Patent Eligibility,
Intellectual Property Update
, October 16, 2025 - Federal Circuit Clarifies Patent Eligibility for Automated Dumbbell Technology,
Intellectual Property Update
, August 18, 2025 - USPTO Unveils New Web-Based Intellectual Property Marketplace Platform,
COVID-19 Update
, May 6, 2020