Experience

Handled IP aspects for sale of privately held technology company to Japanese multinational conglomerate company.

IP specialist for $100 million acquisition of company and its patent portfolio of over 100 properties.

Representation of a large private company in negotiating and drafting long-term SaaS and associated software implementation service contracts in connection with re-platforming its direct-to-consumer ecommerce website.

Representation of a private company in negotiating agreements in connection with obtaining an inventor assignment and exclusive long-term supply commitments of products relating to patent-pending technologies.

Representation of a company in developing a key patent portfolio for soft-switching circuitry forming the basis of an angel-backed spinoff.

Representation of a large private company subject to an aggressive patent licensing program that included a patent infringement suit. Rob analyzed the patent portfolio and prior art while preparing a petition as lead counsel for inter partes review (IPR). Result: favorable settlement avoiding costly litigation.

Prepared and successfully procured domestic and foreign patents across a broad field of electrical arts encompassing electronic circuitry, electro-optical and laser systems, medical devices, visual pattern recognition, video processing, computer networks and software, processor architectures, USB host controller design, cloud-based and Internet-centric business methods, data mining, 3GPP LTE and various WWAN/WLAN wireless communications standards and related datalink technologies, machine-to-machine (M2M) and machine-type communications (MTC), Internet of Things (IoT) technologies, lighting devices, semiconductor wafer processing, liquid crystal devices and display systems, robotic equipment and data readers. Representative U.S. procurement successes:

• • S. Patent No. 10,367,413, “Resonant System Controller and Cycle-By-Cycle Predictive Soft Switching”
  • S. Patent No. 9,813,077, “Asynchronous Electrical Circuitry Techniques for Producing
  • Stationary Carrier Signal to Encode Input Signal Amplitude Into Output Signal Time-Sequence Information”
  • S. Patent No. 9,607,609, “Method and Apparatus to Synthesize Voice Based on Facial Structures”
  • S. Patent No. 9,573,313, “Extruder Screw Shaft Alignment Apparatus and Method”
  • S. Patent No. 9,544,964, “Lighting Devices Employing Class-E Power Amplifier for Inductive
  • Power and Data Transfer in High-Moisture Operating Environments”
  • S. Patent No. 9,519,810, “Calibration and Self-Test in Automated Data Reading Systems”
  • S. Patent No. 9,495,571, “Two-Dimensional Representation of Linear Barcode Derived From Laser Barcode Scanner Scanline Data”
  • S. Patent No. 9,482,488, “Illuminated Reticle System for a Riflescope or Other Aimed Optical Device”
  • S. Patent No. 9,424,480, “Object Identification Using Optical Code Reading and Object Recognition”
  • S. Patent No. 9,025,445, “Machine Type Communication Monitoring Framework for 3GPP Systems”
  • S. Patent No. 8,752,768, “Systems and Methods for Reading Color Optical Codes”
  • S. Patent No. 8,521,934, “Multi-Port Context-Based Host Controller”