Concentration

High technology patent litigation, licensing and counseling

Summary

Robert Maier's practice focuses on intellectual property litigation, especially that involving patents related to developments in the high-tech industry. He has significant experience through all phases of litigation, including discovery, Markman hearings, summary judgment and trial. He also handles patent preparation and prosecution and intellectual property licensing and counseling, including due diligence evaluations for mergers and acquisitions. Mr. Maier's work spans a variety of high technology fields, including computer hardware and software, cellular telecommunications, in-vehicle navigation and telematics, semiconductor manufacturing processes used in the production of ICs and LCDs and Internet applications.

After earning his undergraduate degree, Mr. Maier worked as a software engineer at Telular Corporation, where he was responsible for the design and implementation of software and hardware for production test systems and for field-testing and engineering new cellular communications systems.

Representative Engagements

• Hitachi, Ltd.－patent litigation and counseling relating to liquid crystal display technology
• Toshiba America, Inc.－patent litigation relating to Internet/software technologies and business methods
• FUJIFILM and Fuji U.S.A., Inc.－patent litigation and counseling relating to flash memory, medical diagnostic imaging and other technologies
• Whirlpool Corp.－involved in representation of Whirlpool in dispute relating to various patents directed to refrigeration technologies
• The Hartford Financial Services Group－patent litigation and counseling related to internet and business methods
• Liberty Media－due diligence regarding patent and other IP rights and portfolios relating to satellite and cable television systems in connection with acquisition and joint venture transactions
• American Calcar, Inc.－tried patent infringement action in the United States District Court for the Southern District of California resulting in jury verdict of infringement, validity and enforceability of two American Calcar patents and a damages award
• Plasma Physics Corporation and Solar Physics Corp.－patent litigation and counseling related to semiconductor and liquid crystal display and manufacturing methods
• Symbol Technologies－development, procurement and management of a worldwide patent portfolio directed to wireless networking and device technologies
• Cisco Systems－patent litigation in the area of computer network switch technology
• MasterCard International－patent prosecution and counseling relating to hardware and software technologies
• Columbia University－development, management and licensing of a worldwide patent portfolio directed to a wide range of cutting-edge technologies, including audiovisual compression and transmission and digital signal processing; representation in litigation matters relating to various technologies
• Vidyo, Inc.－intellectual property licensing and counseling and the prosecution and management of a worldwide patent portfolio directed to audiovisual compression and transmission

Publications, Speeches and Presentations

Publications

• "Best Practices for the New Prior Commercial Use Defense of the America Invents Act," IP Management & Valuation, February 2012 (Michael Knierim, co-author)
• "The Big Secret of the America Invents Act," Intellectual Property Today, December 2011
• "House Passes Leahy-Smith America Invents Act; US Poised to Move to a First-Inventor-to-File System, Adopt Other Changes to Patent Laws," Intellectual Property & Technology Law Journal, October 2011
• "Occam's Razor for Patents," Corporate Counsel, February 22, 2010 (Joe Akalski, co-author)
• "A Less Reactive, More Preemptive Approach to E-Discovery," Intellectual Property Today, December 2009 (Jennifer Lazo, co-author)
• "Supreme Court Grants Certiorari to Consider Entitlement to Automatic Permanent Injunction Upon Finding of Patent Infringement," Baker Botts IP Report, November 2005
• "Software Patents Regain Credibility," The European Lawyer, May 2004 (Jeffrey Sullivan, co-author)
• "Recent High-Profile Judgments and Settlements Could Lead to Continued Increase in Litigation of E-Patents," Baker Botts IP Report, February 2004
• "Recent Upswing in E-Patent Litigation Likely to Continue," New York Law Journal, December 2003 (Neil Sirota, co-author)
• "Federal Trademark Dilution Act Requires Proof of Actual Dilution," Baker Botts IP Report, April 2003

Speeches

• Panelist, "The Patent Reform Act (And Other Developments): The Implications For Your Patent Practice," New York City Bar Association, January 2012
• Panelist, "Litigation Implications of the America Invents Act," Rochester Intellectual Property Law Association Fall Symposium, November 2011
• Panelist, "Patent Reform Update: The America Invents Act," Baker Botts IP Law Roundtable, November 2011
• Panelist, "Protecting Your Company Against Patent Trolls," Rochester Intellectual Property Law Association IP symposium, November 2005