Recognized in Best Lawyers since 2021 
Carlyn Burton uses intellectual property (IP) in creative and strategic ways to help clients achieve their business goals. With more than 20 years of IP legal experience under her belt, Ms. Burton has represented a wide range of clients – from accomplished Fortune 500 companies to innovative start-ups. As a scientist, she combines diverse technical knowledge with a strong skill set across multiple areas: domestic and foreign patent prosecution and maintenance, IP counseling, licensing, and IP litigation in the fields of chemistry, materials science, and mechanical engineering, with an emphasis in oilfield technologies, specialty chemicals, polymers, nanotechnology, and pharmaceuticals.
Ms. Burton has drafted and prosecuted hundreds of patent applications in various chemical, materials, and mechanical fields including, but not limited to, complex fluid systems, downhole tools, nanotechnology, batteries, adhesives, polymer chemistry, ion exchange systems, materials development, metallurgy, and consumer products, cosmetics, pharmaceuticals, therapeutics, synthetic peptides, and medical devices.
In the area of IP counseling, Ms. Burton has rendered opinions regarding patentability, infringement, validity, freedom to operate; counseled clients on patent design-around strategies and the strength of patents in anticipation of litigation; developed and implemented global patent prosecution strategies for numerous patent families; led numerous brainstorming sessions to strengthen IP portfolios, and conducted intellectual property due diligence.
In the context of litigation, Ms. Burton has prepared complaints, answers, motions, responses to discovery, and participated in mediations, settlement conferences and hearings for various patent infringement cases and contract disputes before U.S. District Courts, and Section 337 investigations before the U.S. International Trade Commission. Specifically, Ms. Burton’s experience includes development and briefing of infringement (or non-infringement) positions, invalidity positions, and claim constructions for Markman hearings, as well as significant contributions to the domestic industry and remedy strategy, analysis, and briefing before the ITC and Court of Appeals for the Federal Circuit.
Previously, Ms. Burton was a judicial intern for the U.S. District Court for the Southern District of Texas in the Court of the Honorable Judge David Hittner. Prior to law school, Ms. Burton conducted research in the fields of structural investigation of membrane proteins and protein denaturation and renaturation.
