Paul E. Burns

Paul E. Burns concentrates his practice in intellectual property litigation, counseling and transactions, as well as commercial litigation, arbitration and mediation. Mr. Burns practices in Procopio's San Diego, Silicon Valley and Scottsdale/Phoenix offices.

Mr. Burns has acted as lead counsel or co-counsel in patent, copyright, trademark, trade dress infringement, unfair competition, trade secret misappropriation and technology-related contract litigation involving Fortune 1000, Global 500, and public and private companies all over the United States, as well as Europe and Asia. Mr. Burns is also a registered patent attorney who (i) advises clients on intellectual property protection, enforcement and infringement avoidance, (ii) negotiates license, development, distribution and employment agreements, and (iii) engages in patent prosecution, federal trademark registration and copyright registration. Mr. Burns’ has handled matters involving computer hardware, software and all types of information technology, the Internet, entertainment (music, film, video, publishing, art, photography), gaming, semiconductors, electrical devices, chemical processes, manufacturing processes, mechanical devices, consumer products, franchising, medical devices, biotechnology, and pharmaceuticals.

Mr. Burns’ commercial litigation experience includes contract disputes, financial services (e.g. mortgages, loans, credit, securities, bankruptcy) disputes, creditors’ rights, franchise disputes, employee raiding, non-solicitation and other employment-related disputes, business torts, business break-ups, antitrust claims, securities fraud, real estate and construction disputes, regulatory matters and all categories of business and commercial disputes.

Mr. Burns has extensive experience with, and is recognized as a national expert in, Electronic Discovery. He designed and teaches one of the first law school classes in the country on the subject and was a contributor to the law school casebook Electronic Discovery and Digital Evidence (West American Casebook Series 2008). Mr. Burns is also General Counsel to, and a member of the Executive Committee of, The Sedona Conference®, the law and policy think tank that is universally recognized as the thought leader among practitioners and the judiciary in e-discovery matters. He is Co-Chair of The Sedona Conference Institute's 5th Annual "Staying Ahead of the E-Discovery Curve," the leading E-Discovery continuing legal education program. He has also been asked to speak on the subject of E-Discovery to the American Bar Association, the District Conference of the U.S. District Court for the District of Arizona, The Sedona Conference, Arizona State University's Sandra Day O'Connor College of Law, and several other business and legal organizations. Mr. Burns has handled numerous E-Discovery issues and disputes, and has been asked to serve as a Special E-Discovery Master in litigation and arbitration matters.

Mr. Burns’ intellectual property and litigation expertise has been recognized by (i) his inclusion in Best Lawyers in America and Super Lawyers, (ii) his appointment as an Adjunct Professor of Law at Arizona State University’s Sandra Day O’Connor College of Law, where he teaches Patent Litigation, Biotechnology Licensing & Litigation and Electronic Discovery & Digital Evidence, (iii) his appointment to leadership positions in the American Intellectual Property Law Association, Licensing Executives Society, Federal Bar Association, Copyright Society of the USA, and The Sedona Conference, (iv) his contribution to a law school casebook on Electronic Discovery and Digital Evidence, and (v) his nomination as a Fellow of the American Bar Foundation.

Mr. Burns has a substantial national arbitration and mediation practice focusing on technology, intellectual property and commercial disputes, including serving as a neutral for the American Arbitration Association and the International Institute for Conflict Prevention & Resolution (CPR). His arbitration and mediation expertise has been recognized by his appointment as an Adjunct Professor of Law to Pepperdine University School of Law’s Straus Institute for Dispute Resolution and by his service as Chair of the American Intellectual Property Law Association’s Alternative Dispute Resolution Committee. He has been a frequent speaker on alternative dispute resolution at national meetings of organizations such as the American Intellectual Property Law Association, the Copyright Society of the USA and Thomas Jefferson School of Law in San Diego, CA.

Representative Matters

• Representation of Asian-based semiconductor fabricator in preparation for preliminary injunction proceedings in trade secret misappropriation and patent licensing litigation
• Defense of a Fortune 500 health care management company in patent infringement case involving an alleged comprehensive health care management system
• Defense of several public companies against allegations of patent infringement involving bar code scanning technology
• Defense of a pharmacy benefit management company against allegations of patent infringement involving machine-vision technology
• Representation of a chemical processing company in patent licensing and inventorship dispute involving chemical purification process
• Representation of a casino game manufacturer in copyright infringement litigation against competitor
• Defense of a Fortune 100 insurance company against allegations of architectural works copyright infringement in an apartment complex
• Representation of a traffic control technology company in trade secret misappropriation case
• Representation of several companies in connection with allegations of breach of software development contracts involving enterprise-level systems in industries including health care, food services, retail products, and sports memorabilia
• Defense of semiconductor equipment manufacturer in software infringement litigation
• Representation of software developer in copyright infringement dispute against competitor
• Defense of specialty care product distributor in trade dress infringement case
• Defense of computer device manufacturer in trademark/Internet domain name dispute
• Defense of software development company against allegations of assisting in violating restrictive covenants by hiring former senior executives
• Defense of paper products manufacturer against allegations of unfair competition and intentional interference with employment relationships 

 Mr. Burns received his B.S. in Computer Science, magna cum laude, from Boston College, and his J.D., magna cum laude, from Boston College Law School, where he was a law review invitee. He has been listed in The Best Lawyers in America for Intellectual Property and Super Lawyers for Intellectual Property Litigation each year since 2007, and holds a Martindale-Hubbell AV Peer Review Rating. In 2009, Mr. Burns also received a prestigious nomination to be a Fellow of the American Bar Association.

Mr. Burns has served for over five years as an Adjunct Professor of Law at Arizona State University’s Sandra Day O’Connor College of Law, where he teaches Patent Litigation, Biotechnology Licensing & Litigation and Electronic Discovery. He also serves as an Adjunct Professor in Pepperdine University School of Law’s Straus Institute for Dispute Resolution, where he designed and taught its first course on Dispute Resolution in Intellectual Property.

Mr. Burns has held leadership positions in several national organizations. Mr. Burns serves or has served as (i) an appointed member of the American Intellectual Property Law Association’s Professionalism & Ethics Committee, (ii) Chair of the Alternative Dispute Resolution Committee of the American Intellectual Property Law Association, (iii) President and Board Member of a chapter of the Federal Bar Association, (iv) Southwest Chapter Chair of the Copyright Society of the USA, (v) a Licensing Executives Society chapter chair, (vi) a member of the American Arbitration Association’s Large Complex Case Advisory Committee and National Patent Advisory Committee, and (vii) Chair of the Intellectual Property Section of the State Bar of Arizona. He is Pro Bono General Counsel and a member of the Executive Committee of The Sedona Conference, the law and policy think tank addressing intellectual property, complex litigation and antitrust law, and the leading authority on electronic discovery. Mr. Burns is also a member of the Advisory Board of the Center for Law, Science, and Innovation at Arizona State University’s Sandra Day O’Connor College of Law. He is a member of the Intellectual Property and Litigation Sections of the State Bar of California, State Bar of Arizona and the American Bar Association, and serves on the Alternative Dispute Resolution Committees of the International Trademark Association and the Intellectual Property Owner’s Association.

Recent News Coverage

• “Procopio Attorney Paul Burns Presents Before American Arbitration Association's Annual Neutrals Conference in Phoenix, Arizona,” Procopio Press Release, March 2012
• “Procopio and Phoenix-Based Attorney Paul Burns Recognized by US News/Best Lawyers,” Procopio Press Release, February 17, 2012
• Qualters, Sheri. “Pounding the Gavel on E-Discovery,” Corporate Counsel Magazine, December 1, 2011
  

Recent Seminars and Speeches

• "Practical Issues Encountered in E-Discovery Social Media Discovery Evidence Issues and Spoliation of Evidence," 2011 Arizona District Conference, Tucson, AZ, March 11, 2011
• “Copyrights in the Cloud – Social Networking and Fair Use,” Copyright Society of the USA Mid-Winter Meeting, 2010
• “The Ethical Minefields of Arbitration and Mediation – What Every Lawyer Needs to Know,” American Intellectual Property Law Association Mid-Winter Institute, 2010
• "Special Considerations In Technology and Intellectual Property Arbitrations," American Arbitration Association, 2009
• "Patent Dispute Resolution," Thomas Jefferson School of Law, 2009
• Moderator, "Settlement Conferences and Mediation in Federal Court," Federal Bar Association, 2009
• "Recent Supreme Court and En Banc Patent Cases," State Bar of Arizona, 2008
• Moderator/Speaker, "Intellectual Property Issues Within the Employer/Employee Relationship," State Bar of Arizona Annual Convention, 2006
• "Copyright Under Pressure," Copyright Society of the USA Annual Meeting, 2006
• "Electronic Discovery," American Bar Association Annual Meeting, 2006
• "E-mail: The Silent Killer of Companies," Maricopa County Bar Association, Corporate Counsel Division, 2005, 2004
• "Managing Conflict in IP Cases," State Bar of Arizona Intellectual Property Law Section, 2005
• "Technology-Related Transaction Tips for Corporate Counsel," Co-sponsored by Association of Corporate Counsel and Licensing Executives Society, Arizona Chapter, 2005
• "Red Lights & Green Flags: Rules of the Road for Advertisers," State Bar of Arizona and Federal Trade Commission, 2005
• "Cost-Shifting in E-Discovery," Stafford Publications, 2005
• "Document Retention and Destruction in Arizona," Lorman Education Services, 2005
• "Alternative Dispute Resolution in Intellectual Property Disputes," State Bar of Arizona Intellectual Property Section, 2005
• "E-mail Risk Management," State Bar of Arizona Annual Meeting, 2004
• "Website Development Agreements," State Bar of Arizona Annual Meeting, 2003
• "Technology and Intellectual Property Issues for Non-technology Companies," Maricopa County Bar Association, Corporate Counsel Division, 2003
• "Knowing When to Pursue a Patent," Arizona State University, IEEE Student Chapter, 2003
• "Technology Entrepreneurship," Arizona State University, IEEE Student Chapter, 2001
• "The Napster Decision," Arizona State University School of Law, 2001
• "The Law of the Internet," NBI, 2001, 1997
• "Advanced Internet and Computer Law Issues," NBI, 1998.

Recent Articles/Publications

• Contributing Author, "Electronic Discovery and Digital Evidence," Scheindlin & Capra, West, 2008
• "Companies Need To Address New E-Discovery Rules," The Business Journal, 2007
• "Courts Need Balance in Patent Rights Cases," The Business Journal, 2006
• "File Sharing on the Web: A Case of Common Sense," The Business Journal, 2005
• Co-author, "An Introduction to Business Method Patents," NBI, 2001
• "Following Austin's Lead to High-Tech Future," The Arizona Republic, January 9, 2001
• co-Author, "Intellectual Property Law in Cyberspace," NBI, 1998
• "Special Problems of Trademark & Copyright Law of the Internet," NBI, 1997
• "The Long Arm of the Law of the Internet," NBI, 1997
• "Timing Is Paramount: The Impact of Paramount v. Time on the Law of Hostile Takeovers," 19 Fl. St. U. Law Rev. 761, 1992