George “Trey” Lyons, III

Overview

George “Trey” Lyons, III is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and maintains a strong commitment to helping startup and large-entity clients reach positive results by providing advice and crafting innovative solutions for obtaining and enforcing patent, copyright, and trademark rights in the U.S. and abroad.

Mr. Lyons has extensive experience acquiring and protecting these IP rights in various technical fields, specializing in data processing, software, and user interaction with computer hardware, among other hi-tech innovations. Mr. Lyons has also helped establish IP programs for a number of clients, both large and small, and oversees building, sustaining, and monetizing the portfolios of IP rights gained therefrom.

Mr. Lyons also litigates and appeals these matters, when necessary, before the USPTO and various U.S. District Courts and U.S. Courts of Appeals. Mr. Lyons’s  experience as a litigator (and former clerk) in these forums provides key insight and value to his clients.

Currently, Mr. Lyons serves as Co-Chair of the firm’s Ethics Committee and a member of the firm’s Business Development Committee. Mr. Lyons also helped form a Canna-IP practice group to help address the ever-growing IP needs often neglected in the space.

Prior to joining MBHB, Mr. Lyons worked as a research physicist for projects undertaken at The National Center for Physical Acoustics and Fermi National Accelerator Laboratory (Fermilab).  In his personal time, Mr. Lyons collects vintage musical instruments (particularly early Fender, Gibson, and Martin guitars) and is an avid hockey enthusiast and player.

Education
  • J.D., University of Mississippi School of Law,

    Summa Cum Laude; Mississippi Law Journal; Mississippi Moot Court Board; Mississippi Trial Advocacy Board; Honor Council; Phi Kappa Phi

  • M.S., University of Mississippi,

    Physics, with Honors; Sigma Pi Sigma

  • B.S., University of Mississippi,

    Physics

  • B.A., University of Mississippi,

    Mathematics

Bar Admissions
  • Illinois
  • Mississippi
  • U.S. Patent & Trademark Office
Memberships
  • American Bar Association – Section of Intellectual Property
  • PTAB Bar Association – Chicago Coordinator, Young Lawyers and Agents Committee
  • International Trademark Association
  • Lawyers for the Creative Arts

Recognition

  • Law Clerk for the Honorable E. Grady Jolly, U.S. Court of Appeal Judge in the U.S. Court of Appeals for the Fifth Circuit.
  • Judicial Extern to the Honorable Michael P. Mills, U.S. District Court Judge in the U.S. District Court for the Northern District of Mississippi.

Experience

  • Prosecuting patent applications for a variety of hi-tech inventions and devices, particularly data processing and software, as well as improved user experiences with hi-tech devices and operating systems, among other hi-tech innovations.
  • Representing hi-tech clientele in a variety of litigation matters across U.S. district courts (e.g., D. Del., N.D. Ill., W.D. Tex., N.D. Cal.).
  • Preparing and advocating in PTAB matters, including preparing inter partes review (IPR) responses and filings involving various hi-tech practice areas.
  • Authoring briefs in patent cases before the U.S. Supreme Court and U.S. Court of Appeals for the Federal Circuit.
  • Advising several companies regarding their patent, copyright, and trademark rights and related portfolios, as well as creating and fostering IP programs for a number of hi-tech clients.
  • Representing a photographer in a copyright dispute with multinational clothing manufacturer and negotiating a favorable settlement.
  • Representing a pro bono plaintiff under 42 U.S.C § 1983 and negotiating a favorable settlement.

Published Articles

Federal Circuit Overhauls Rules of Practice and Forms: Important Takeaways, Snippets Alert (July 2, 2020)

2019 Patent Trial and Appeal Board Key Practice Updates: A Year in Review, Snippets (2019 Vol. 17 Issue 3)

Pot of Gold?, Intellectual Property Magazine.

Navigating the Chaos of Soft IP, Cannabis Business Times.

The Green Rush to the Patent Office, Cannabis Business Times.

What You Can Do to Prevent Multiple Petitions (or How You Can Successfully File One) — Part I: The PTAB’s “Multiple Petition Study”, Patent Docs (Mar. 25 2018, 11:59 PM).

Charting the Waters of International Service Requirements in the Wake of Water Splash v. Menon, Intellectual Property Magazine.

Sessions’s War on the Cole Memo and the New Frontier for the Canna-IP Industry, Patent Docs (Jan. 4 2018, 11:59 PM).

Biotech Institute’s Growing Patent Portfolio — U.S. Patent No. 9,095,554 and the Path Forward, Patent Docs (Nov. 16 2017, 11:59 PM).

High Risk, High Reward: An Overview of Navigating IP Rights in the Green Rush, Snippets (2017).

Practice tips for copyright owners in the wake of Star Athletica v. Varsity Brands, Westlaw Journal Intellectual Property (Sept. 27, 2017).

Intellectual Ventures I LLC v. Symantec Corp. — Judge Mayer on the First Amendment, Patent Docs (Oct. 24 2016, 11:59 PM).

The Analysis for Design Patent Infringement Post-Egyptian Goddess, Snippets (2014) (reprinted as “Tests For Design Patent Infringement Post-Egyptian Goddess,” Law 360 (Sept. 26, 2014, 10:08 AM)).

New Habits and Hard Law: Putting Old Soft Law ‘Sanctions’ and the Space Debris Epidemic Out to Pasture, 39 2 J. SPACE. L. 453 (2014).

The Current State of American Air Travel: Checking Your Baggage and Dignity at the Gates, 84 MISS. L.J. SUPRA 1 (2014).