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. 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.
- 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.