WILLIAM R. TRUEBA, JR.
William Trueba is a partner and co-leader of AVILA’s Intellectual Property department, where he focuses his practice on the enforcement of domestic and international intellectual property rights for a wide range of clients across various industries.
Mr. Trueba is Board Certified in Intellectual Property Law and is a U.S. Registered Patent Attorney with the U.S. Patent & Trademark Office, with previous professional experience as an electrical engineer. He has represented clients in patent infringement lawsuits involving various technologies, including software, lasers, construction equipment, pharmaceuticals, HVAC systems, marine equipment, nutritional supplements, L.E.D. electronics, super capacitors, hunting equipment, motion detectors, pet products, baby products, and farming methods, among others. He has also represented clients in the enforcement of copyrights involving motion pictures, music, artwork, photography, software and jewelry. He has also assisted clients with trademark and trade dress matters involving various goods and services, such as distilled spirits, product packaging, clothing, accounting services, building and property inspection services, automobile parts and aftermarket related goods, boats, fishing gear, sunscreen, among others.
In addition to his trial experience, he has assisted clients with the prosecution of patent, trademark and copyright applications. He works closely with the Corporate and Litigation departments to provide clients with another layer of the comprehensive and excellent service they have come to expect from AVILA.
Mr. Trueba graduated cum laude from the University of Miami School of Law. He also attended Florida International University, where he earned a Bachelor of Science in Electrical Engineering. He is an active member of the American Intellectual Property Law Association, the Intellectual Property Committe of the Florida Bar’s Business Law Section, the Miami Catholic Lawyers Guild, and the Christopher Columbus Lawyers Alumni Society. He is a member of the advisory board for the Florida International University College of Engineering and Computing, where he guest-lectures regularly on issues involving intellectual property protection to engineering students. He was recognized as the Most Effective Lawyer in the Intellectual Property category by the Daily Business Review in 2014. He has been selected by his peers as a Super Lawyer for more than ten years and a Florida Trend Magazine Legal Elite. Mr. Trueba is fluent in English and Spanish.
University of Miami, J.D., cum laude (1997)
Florida International University, B.S., Electrical Engineering (1990)
American Intellectual Property Law Association, AIPLA Model Patent Jury Instructions Subcommittee
Florida Bar Business Law Section, Intellectual Property Law Committee
Miami Catholic Lawyers Guild
Christopher Columbus Lawyers Alumni Society
U.S. Patent and Trademark Office
U.S. District Courts Southern, Middle and Northern, Districts of Florida, and Central District of Illinois
U.S. Court of Appeals, Eleventh Circuit and Federal Circuit
Tawnsaura v. Vitacost.com, (U.S. District Court for the Central District of California) Successfully represented Vitacost.com in a patent infringement lawsuit involving several defendants charged with patent infringement over the production and sale of a nutraceutical. The federal court invalidated the patent on summary judgment on the grounds that the patent was obvious in view of prior technology.
Acosta v. Spanish Broadcasting System of Delaware, Inc., (U.S. District Court for the Southern District of Florida) Obtained summary judgment of liability against the defendants for copyright infringement for violating plaintiff’s copyrighted motion picture.
Represented Banco de Credito e Inversiones (BCI), the third largest bank in Chile, in the purchase of City National Bank of Florida from Bankia, S.A., for a purchase price of $946.9million. Al participated in due diligence, negotiation of the purchase agreement, U.S. regulatory filings, and all other transactional matters.
Publications & Speaking
Regular guest lecturer at Florida International University on intellectual property protection (Sept 2023).
The Florida Bar Intellectual Property Symposium: Spring 2022 “Case Study: Summary Judgment in IP Litigation (a Judicial View) (April 2022).
Awards & Recognition