3000 El Camino Real | 5 Palo Alto Square Suite 400, Palo Alto, CA 94306
Bob advises clients on matters pertaining to intellectual property counseling and litigation. He has broad experience in litigating patents related to a variety of technologies, including software, computer peripherals, mechanical devices and biotechnology, as well as matters involving copyright, trademark and trade secrets. Bob leverages his experience as a senior in-house lawyer at a major technology company to provide a unique set of skills to resolve clients’ legal disputes.
- Defended early stage GPS company against claims of patent infringement brought by a non-practicing entity. Obtained favorable settlement without having to respond to lawsuit.
- Represented multinational designer and supplier of power equipment in suit brought by non-practicing entity for patent infringement. Client settled on favorable terms.
- Defended large electronics company in suit claiming infringement of a number of patents. Obtained favorable settlement before completion of claim construction proceedings.
- Managed numerous software patent infringement cases.
- Defended manufacturer of construction equipment against charges of patent infringement.
- Represented leading developer of resume software in matters relating to patent and trademark infringement.
- Defended German patent prosecution law firm in suit for breach of contract and legal malpractice in connection with the filing of foreign patents.
- Analyzed possible infringement claims on behalf of inventor of micro-turbine engines.
- Defended developer of biotechnology products in suit alleging patent infringement.
- Represented Internet software company in suit for patent infringement.
- Defended producer of electronic music files in action for copyright infringement.
- Defended seller of computer peripheral devices against charges of patent infringement.
- Defended developer of analytics software in trademark cancellation proceeding before the Trademark Trial and Appeal Board.
- Defended advertising agency in suit alleging copyright and trademark infringement.
- Defended CEO of international industrial real estate development company accused of bankruptcy fraud.
- Martindale-Hubbell® AV Preeminent Rating
- Super Lawyers®, Intellectual Property Litigation, 2020
- AmLaw Top Rated Lawyer in Intellectual Property Law, 2018
- JD, University of California Hastings College of the Law, Order of the Coif (Hastings Law Journal Editor), 1979
- BS (Mechanical Engineering), Stanford University, 1976
- BA (History), Stanford University, 1975
- Panelist. “Procopio International Litigation & Arbitration Retreat: Resolution of Conflicts involving the U.S. and Mexico,” San Diego, September 29, 2023.
- Co-author. “5 Takeaways from the U.S. Supreme Court Decision in Amgen v. Sanofi,” May 23, 2023.
- Co-presenter. “Is Your Life Sciences Patent Enabled? The U.S. Supreme Court is Considering that Question,” Procopio Perspectives podcast, March 29, 2023. Transcript.
- Co-presenter. “Is Your Life Sciences Patent Enabled?” webinar, March 14, 2023.
- Co-presenter. “Greater Speed and Efficiency: Steps IP Offices Around the World Are Taking to Streamline the Patent Process,” Procopio Perspectives podcast, December 20, 2022. Transcript.
- Author. “What’s the Best Court for Your Patent Infringement Suit? The Answer May Have Just Changed,” July 26, 2022.
- Author. “District Court Decisions Put Willful Infringement and Enhanced Damages Issues at Center Stage,” IP Litigator, Wolters Kluwer, Vol. 28 No. 2, March/April 2022.
- Author. “The Latest from the Federal Courts: More Uncertainty Regarding Willful Infringment and Enhanced Damages,” March 24, 2022.
- Author. “Can a Patent Owner Claim Enhanced Damages in the Absence of Willful Infringement?” February 7, 2022.
- Author. “The Continued Impact on Patent Prosecutors and Litigators of the Federal Circuit’s Expanded Treatment of Means Plus Function Claims,” January 31, 2022.
- Co-presenter. “Willful Patent Infringement: Understanding and Preparing for Claims,” Procopio Perspectives Podcast, January 24, 2022.
- Author. “Is Receipt of a Complaint Sufficient Notice for Claims of Indirect or Willful Infringement,” January 24, 2022.
- Co-author. “4 Keys to Protecting Your Trade Secrets with an NDA,” December 10, 2020.
- Co-presenter. “Are Your Trade Secrets Protected — Legally and Technically — in the COVID-19 Era?” Procopio webinar, October 22, 2020. Webinar recording and PowerPoint.
- Co-presenter. “Are Your Trade Secrets Protected – Legally and Technically – In The COVID-19 Era?,” Procopio Perspectives Podcast, October 12, 2020.
- Co-presenter. “Patent Troll Litigation Is On The Upswing,” Procopio Perspectives Podcast, June 26, 2020.
- Author. “Recent Court Decision May Provide Willful Patent Infringement Defendants Relief,” June 19, 2020.
- Co-presenter. “Contract Drafting Tips From the Litigator’s Perspective: Avoiding Lawsuits in the Post COVID-19 World,” May 27, 2020.
- Co-presenter. “Avoiding Litigation While Resolving Disputes: Commercial Contract Challenges During COVID-19,” May 5, 2020.
- Co-author. “Avoiding Litigation While Resolving Disputes: Commercial Contract Challenges During COVID-19,” April 27, 2020.
- Author. “Not Appealable” Means Just That Regarding Institution of IPR Timeliness Challenges: U.S. Supreme Court,” April 21, 2020.
- Author. “Federal Circuit Rejects Legitimacy of PTAB Judge Appointments: What’s Next?” November 1, 2019.
- Co-author. “Recent Court Decisions Drive Strategic Approaches to Pursuing Sound Patent Protection,” September 10, 2019.
- Co-author. “Where Do Patent Owners Fit In The Current Federal Circuit-USPTO Patentability Divergence?,” April 30, 2019.
- Co-presenter. “Exploring the Stages of a Trade Secrets Case Through Hypotheticals,” Association of Corporate Counsel, September 12, 2018.
- Co-presenter. “Trade Secrets – An Emerging Force in Intellectual Property,” West LegalEd Center, September 11, 2018.
- Author. “U.S. Supreme Court Holds Some Foreign Sales May Be Included in Patent Infringement Damages,” June 26, 2018.
- Panelist. “How to Get Your Claims Through the Patent Office and Ready for Enforcement,” IP Counsel Cafe, Palo Alto, CA, April 22, 2015.
- Co-presenter. “Recent U.S. Supreme Court Patent Cases,” Technology Transfer Center, Industrial Technology Research Institute (ITRI) and Taiwan Commercial Law Offices & KPMG Law Firm, Taipei, Taiwan, December 2014.
- Author. “Fed. Circ. Wrestles With Conflicting Court And PTO Rulings,” Law360, October 1, 2014.
- Co-presenter. “Patent Prosecution from a Litigator’s Viewpoint: Position Your Patent to Succeed in Litigation and Post-Grant Procedures,” AIPLA Online CLE Webinar, Nationwide, September 24, 2014.
- Author. “When is Final Really Final? The Federal Circuit Wrestles with Conflicting Court and PTO Decisions Relating to the Same Patent,” September 22, 2014.
- Panelist. “Intellectual Property Supreme Court Case Review,” AIPLA 2014 Electronic and Computer Patent Law Summit, Chicago, IL, June 17, 2014.
- Co-author. “Protecting Confidences: Applicability of the Attorney-Client Privilege to Communications Made in Japan,” May 29, 2014.
- Co-presenter. “Ethical Considerations in Intellectual Property Litigation: An Interactive Dialogue and Case Study,” Menlo Park, CA, May 7, 2014.
- Speaker. “Cost-cutting Strategies for Your Patent Practice,” IP Counsel Café, Palo Alto, CA, April 3, 2014.
- Author. “Have We Seen This Movie Before? The Supreme Court Again Takes Up Patent-Eligibility in Alice Corp. v. CLS Bank Int’l,” AIPLA Electronic & Computer Law Committee, April 2014.
- Author. “Have We Seen This Movie Before? The Supreme Court Again Takes Up Patent-Eligibility in Alice Corp. v. CLS Bank Int’l,” December 19, 2013.
- Speaker. “New Post-Grant Review Procedures Under the AIA,” Fordham University IP Summit, New York, NY, November 18-19, 2013.
- Speaker. “The Corporate Client’s Perspective: In-House Attorneys Discuss Litigation and the In-House Experience,” Association Business Trial Lawyers of San Diego, San Diego, CA, November 12, 2013.
- Speaker. “A Look Inside the USPTO – The Realities of Obtaining and Enforcing Patents,” Vietnamese American Bar Association of Northern California, Menlo Park, CA, October 15, 2013
- State Bar of California
- American Intellectual Property Law Association
- Palo Alto Veterans Institute for Research, Member, Board of Directors
- Hillbarn Theatre, Member, Board of Directors
- Bultman, Matthew. “Paying More in Patent Damages a Puzzle Ready for the High Court,” Bloomberg Law, April 27, 2022.
- Hu, Tiffany. “Fed. Circ. Partly Reverses PTAB Ruling On Phone Jack Patent,” Law360, July 1, 2021.
- Posses, Shayna. “Emerson Can’t Review Facebook Deal In Trade Secrets Row,” Law 360, November 26, 2018.
- “Corporate lateral continues Procopio’s growth,” Daily Journal, August 12, 2013.
- “Oracle Patent Litigator Jumps to Procopio,” Law 360, August 9, 2013.