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8355 East Hartford Drive, Suite 202
Scottsdale, Arizona 85255
Direct Phone: 480.388.3357
Direct Fax: 480.388.3358

1020 Marsh Road, Suite 200
Menlo Park, California 94025
Direct Phone: 650.645.9022

paul.burns@procopio.com
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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.

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.
Education
  • JD, Boston College Law School, magna cum laude (law review invitee)
  • BS (Computer Science), Boston College, magna cum laude
Distinctions
  • American Bar Association - Fellow
  • Arizona's Top Rated Lawyers - 2013
  • Martindale-Hubbell® AV Preeminent Rating
  • San Francisco’s Top-Rated Lawyers - 2012
  • Southern California's Top Rated Lawyers - 2012, 2013
  • Super Lawyers – 2007-2012 (Intellectual Property Litigation)
  • The Best Lawyers in America® – 2007-2014 (Copyright Law, Litigation-Intellectual Property, Litigation-Patent, Patent Law)
  • Top Rated Lawyer in Technology Law – 2013
Community Involvement
  • American Arbitration Association – Large Complex Case Advisory Committee, National Patent Advisory Committee
  • American Bar Association
  • American Intellectual Property Law Association – Professionalism & Ethics Committee, Alternative Dispute Resolution Committee Chair
  • ASU Sandra Day O’Connor College of Law – Center for Law, Science, & Innovation Advisory Board
  • Federal Bar Association – President, Board Member
  • Intellectual Property Owner’s Association – Alternative Dispute Resolution Committee
  • International Trademark Association – Alternative Dispute Resolution Committee
  • Licensing Executives Society – Chapter Chair
  • State Bar of Arizona – Intellectual Property Section Chair
  • The Copyright Society of the USA – Southwest Chapter Chair
  • The Sedona Conference® – Board of Directors, Pro Bono General Counsel, Executive Committee

Recent News Coverage

Recent Publication
  • Contributing author. "Electronic Discovery and Digital Evidence," Scheindlin & Capra, West, 2008.
  • "Companies Need To Address New E-Discovery Rules," The Business Journal, 2007.
Recent Seminars 
  • "Expert Roundtable I: Government Investigations & Regulatory Actions; IP and Tech Litigation," The Sedona Conference Institute's 7th Annual e-Discovery Program: Living on e-Discovery's Cutting Edge, San Diego, CA, March 21-22, 2013.
  • "Technology Assisted Review (TAR): What, Why, When, and How," The Sedona Conference Institute's 7th Annual e-Discovery Program: Living on e-Discovery's Cutting Edge, San Diego, CA, March 21-22, 2013.
  • “ESI in ADR - When the FRCP Do Not Apply,” ASU-Arkfeld e-Discovery and Digital Evidence Conference, Tempe, AZ, March 13-15, 2013.
  • “Protecting Your Intellectual Property: When to Rely on Trade Secrets, Copyrights and Trademarks and what to do to Avoid a Patent Infringement Suit,” Procopio and SV Forum, Palo Alto, CA, June 13, 2012.
  • “IP & Employment Matters - Common, Costly Mistakes for Start-up Entrepreneurs to Avoid,” Procopio and SV Forum, Palo Alto, CA, May 22, 2012.
  • “Proportionality in Preservation & Discovery,” The 5th Annual Sedona Conference Institute, San Diego, CA, March 17-18, 2011.
  • “Discovery from the World of Social Media: What to See, How to Ask & What to Expect,” The 5th Annual Sedona Conference Institute, San Diego, CA, March 17-18, 2011.
  • “Navigating the Clouds for eDiscovery Risks & Realities,” The 5th Annual Sedona Conference Institute, San Diego, CA, March 17-18, 2011.
  • “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.
  • "Settlement Conferences and Mediation in Federal Court," Federal Bar Association, 2009.
  • "Recent Supreme Court and En Banc Patent Cases," State Bar of Arizona, 2008.
  • "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," 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.