Paul Roberts – Patent Attorney, Protectitip, LLC

1050 30th St. NW Washington, DC 20007  · 703-981-6200

 

EDUCATION

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Rutgers School of Law, NJ; Juris Doctorate, Cumulative GPA 3.83, graduated Magna Cum Laude, May 2008
Johns Hopkins University, Baltimore, MD Bachelor of Science, Biomedical Engineering, minor in Computer Science, GPA 3.16 completed in 3 yrs, 2002
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 AWARDS:

Federal Circuit Bar: Probono Advocacy Achievement Award 2013

 CURRENT AREAS OF INTEREST & RESEARCH

  • Internet privacy, personally identifiable information, web marketing, open source, cloud computing
  • Contracts for manufacturing, distribution, purchasing, software development, and patent licensing
  • Patent eligibility (§101) and business methods, NPE/patent troll, software transferability
  • Patent damage analysis g. conjoint, lost profits, reasonable royalty, and entire market value rule
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TECHNICAL EXPERIENCE

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  • Undergraduate work specializing in surgical tools, artificial hormone regulation, and surgical robotics.
  • Patent Examiner in fields of surgical robotics (remote control surgical techniques), blood testing tools (CBC scanners, flow cytometers), respiratory devices (mechanical lungs, breathing tubes, etc.) prosthetics, coatings on surgical tools, shape memory tools, orthopedic and implants, stents, & medical adhesives.
  • Represented Wake Forest University in the wound vac cases, e.g. Kinetic Concepts, Inc. v. Blue Sky Med. Grp., Inc., 554 F.3d 1010, 1016 (Fed.Cir.2009).
  • Represented Constitution Medical Investors in the development of fully automatic complete blood cell count machine, including hardware engineering, patenting of components and system, freedom to operate, invalidity opinions, software engineering such as counting and cell recognition algorithms.
  • Written over 50 patents of sleep monitoring devices, health portals and health “apps,” numerous surgical tools.
  • Strong command of HIPAA and personal identifiable information requirements.
  • Author of The Intersection of Intellectual Property, Health Law, and Privacy, focusing on the unique requirements of obtaining FDA approval for medical devices and drugs while meeting requirements for novelty and unobviousness, and how to balance tradeoffs between security, privacy, and ease of access.
  • Numerous publications on how open source and cloud computing impacts medical devices, drugs, and personal identifiable information.
  • Recent valuation work on a bionic eye patent portfolio to correct cataracts.
  • Technical areas of specialty: encryption, data mining, search engines, online advertising, databases, mobile applications, natural language processing, image processing, graphic user interfaces, firmware, web design and server code.
  • Representative patent drafting and prosecution clients include: Sun Microsystems, Oracle, Google, Alienware, MSC Software, and Hitachi.
  • Defense counsel for Sun Microsystems and Oracle for several patent troll litigations.
  • Written over twenty licenses including open source licensing agreements, end user agreements, software consulting agreements, and patent licenses.
  • Strong command of computer software languages including: C++, Visual Basic and Excel programming, Java, Perl, PHP, XHTML, CSS, XML, ASP, Cold Fusion, and Matlab.
  • Author of Patent Law and the Internet, focusing on patent troll litigation in the software arena, application of 35 USC 101, and impacts the AIA will have on software patents.
  • Numerous presentations on the patentability of software and current issues in open source licenses.
  • Chair of the ABA Software and Cloud Computing Committee, and chair of the ABA’s Science and Technology Committee for YLD 
  • Inventor on three RFID and EAS US Patents 7,583,194, 7,568,108, and 7,380,711.
  • Worked as technical specialist and engineer for Checkpoint Systems.
  • Helped draft various RFID standards and determine whether patents owned by standards members were necessary or optional. Exemplary standards include the EPCGlobal Gen 2 Tag Specification, Tag Data Standard, Tag Data Translation, and Reader Management Specification.
  • Full freedom to operate analysis for development of new RFID tag marketing and manufacturing in relation to the patent portfolios of Texas Instruments, Intermec, Sensormatic, Zebra, Walmart, and SAP.
  • Written about 35 RFID based patents in fields such as tracking, shrink management and antitheft, tag readers, tag antennas, encryption, and tag identification and collision algorithms.
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LEGAL EXPERIENCE

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Eleven years patent drafting experience in drafting patents in software, surgical, computer architecture, medical instruments, smart phones, memory controllers, and robotics.

Examples: 2009/0269799, 2010/0288173, 2011/0108009; 20110078487; 2009/0304101, 2011/0078015, 2008/0297354, 2008/0094220, 2012/0149050, 7,278,026, WO/2012/027684, WO/2012/012545, 2013/0218776, 7624037.  Very strong PCT practice, portfolio management and policing of patent rights, and experience with reexamination proceedings.

Current technical areas of focus include:

  • Mobile, RFID, and electronic payments systems
  • Encryption particularly for smart phones and personally identifiable data
  • Web advertisement platforms
  • Health portals including HIPAA compliance
  • Financial trading and securities platforms

Five years of experience in patent litigation including: depositions (preparation including adverse and expert depositions), claim construction briefs, motions for summary judgment, invalidity contentions, litigation holds and e-discovery, research on concepts like patent exhaustion and damage estimation.

Exemplary trials include:

  • Optimum Processing Solutions, LLC v. Advanced Micro Devices, Inc et al., 1:09cv1098, U.S. District- Georgia Northern –5,115,497; technology related to processors, particularly multi core processing.
  • Ring Technology Enterprises of Texas, LLC V. A-Data Technology (USA) Co, Ltd et Al., 2:09cv383, U.S. District – Texas Eastern — 6,879,526 technology concerned memory shift registers.
  • Acceleron, llc v. Egenera, Inc et al., 6:08cv417, U.S. District – Texas Eastern — 6,948,021; Hot swap technology and blade server technology.
  • Thomson Licensing SAS. v. Qisda Corporation et. al., 337-TA-741/749 ITC. — 5,978,063; 5,648,674; 5,621,556; and 5,375,006; technology involved LCD displays particularly active matrix technology.
  • Kinetic Concepts, Inc. v. Blue Sky Med. Grp., Inc., 554 F.3d 1010, 1016 (Fed.Cir.2009).
  • Stone v. Stone, 2007 DRB 001461, DC Family Court, Probono custody litigation.

  • Economic modeling of generic drugs and fair market value analysis of medical services.

  • Development of venture capitalized ANDA litigations through shell companies and brand targeting.

  • Compliance of HIPAA security against claimed embodiments.

  • Prepared 25 page article on Hatch-Waxman supplemental patent term, Bola provisions, market/data exclusivity, and compulsory licensing requirements for top 15 GDP countries.

  • Spearheaded 100 page chapter on the intersection of health law and intellectual property.

  • Prepare and negotiate stock purchase agreements, open source licenses, end user licenses, software contracts, consultant agreements, prepare custom assignments and patent licensing.

  • Mergers and acquisitions: prepare IP holding companies to be purchased, draft and negotiate contracts and licenses for IP sale or acquisition.

  • Prepare numerous licenses including open source licensing agreements, end user agreements, software consulting agreements, and patent licenses.