Education and Honors

  • J.D., Fordham University School of Law, 2002
    Staff Member, Intellectual Property Law Journal
    Archibald R. Murray Public Service Award
  • B.S., computer engineering, George Washington University, 1998
    The George Washington University Engineering Award
  • Recognized as a New York Super Lawyer “Rising Star,” 2013

    Recommended in The Legal 500 U.S., 2013

    Recognized in Intellectual Asset Management’s IAM Patent 1000 – The World’s Leading Patent Practitioners, 2012 & 2013

Admissions and Affiliations

New York State Bar

United States Patent and Trademark Office

United States District Courts for the Southern and Eastern Districts of New York

United States Court of Appeals for the Federal Circuit

New York Intellectual Property Law Association, Patent Litigation Committee

Association of the Bar of the City of New York, Patents Committee

American Intellectual Property Law Association, Patents Committee

Robert Maier

Partner

30 Rockefeller Plaza New York, New York 10112-4498
United States
Phone:
+1.212.408.2538
Fax:
+1.212.259.2538

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 has been described by clients as “one of the most skilled people you are ever likely to see in the courtroom,” and considered a “strong, practical advocate.” (Intellectual Asset Management’s IAM Patent 1000 – The World’s Leading Patent Practitioners - 2012 & 2013). 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.

Mr. Maier is also an Adjunct Associate Professor of Law at Brooklyn Law School, where he teaches patent litigation.

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

IP Litigation Matters

  • Patentmarks Communications LLC v. Samsung Telecommunications America, LLC (United States District Court for the District of Delaware) – Representation of Samsung in defense against allegations of patent infringement relating to multiple path wireless telecommunications technologies.
  • Smartflash LLC v. Samsung Electronics Co. Ltd. et al. (United States District Court for the Eastern District of Texas) – Representation of Samsung in defense against allegations of patent infringement relating to data storage and access system technologies.
  • Hartford Fire Insurance Co. v. Progressive Corp. et al. (United States District Court for the Northern District of Ohio) – Representation of Hartford in patent litigation relating to insurance processing system technologies.
  • Varia Holdings v. Samsung Electronics America et al. (United States District Court for the Southern District of New York) – Representation of Samsung in defense against allegations of patent infringement relating to mobile device input technology.
  • Ushijima v. Samsung Electronics Co., Ltd. et al. (United States District Court for the Western District of Texas) – Representation of Samsung in defense against allegations of patent infringement relating to liquid crystal display manufacturing technology.
  • Lewit v. PepsiCo (United States District Court for the Northern District of Illinois) – Representation of PepsiCo in a utility patent infringement suit involving drink packaging.
  • Williamson v. AT&T, Inc. et al. (United States District Court for the Southern District of New York) – Representation of AT&T in defense of patent infringement allegations relating to delivery of IPTV over a network.
  • Intellectual Ventures I LLC et al. v. AT&T Mobility LLC et al. (United States District Court for the District of Delaware) – Representation of AT&T in defense of patent infringement allegations relating to cellular communications and other wireless communications technologies.
  • Semcon Tech LLC v. Fujifilm Electronic Materials U.S.A., Inc. (United States District Court for the District of Delaware) – Representation of Fujifilm in a patent infringement action relating to semiconductor manufacturing methods and materials. Secured dismissal without prejudice on behalf of Fujifilm.
  • Fujifilm Corp. v. Eastman Kodak Co. (United States District Court for the Southern District of New York) – Representation of Fujifilm in patent infringement action against Kodak relating to digital camera and imaging technologies.
  • Phoenix Licensing LLC v. The Hartford et al. (United States District Court for the Eastern District of Texas) – Representation of The Hartford in a patent infringement action relating to business method patents.
  • Fractus, S.A. v. Samsung Electronics Co, Ltd; et. al. (United States District Court for the Eastern District of Texas) – Representation of Samsung in a patent infringement action relating to mobile phones.
  • American Calcar v. American Honda Motor Co. (United States District Court for the Southern District of California) – Representation of American Calcar in patent infringement suit involving in-vehicle telematics technology.
  • Solar Physics Corp. et al. v. Chi Mei Optoelectronics et al. (United States District Court for the Eastern District of New York) – Representation of Plasma Physics Corp. and Solar Physics Corp. in series of patent infringement suits relating to LCD display manufacturing technology and plasma enhanced chemical vapor deposition (PECVD) processing.
  • Nuvasive, Inc. et al. v. Orthofix Int’l. Inc., et al. (United States District Court for the District of New Jersey) – Representation of Nuvasive in action for infringement of Nuvasive patent relating to mesenchymal stem cell technologies. Case settled on favorable terms.
  • Honeywell Int’l, Inc. et al. v. Hitachi Display Devices, Ltd. et al. (United States District Court for the District of Delaware) – Representation of Hitachi in patent litigation relating to liquid crystal displays, backlighting, and optical components.
  • Orion IP, LLC v. Fujifilm; Hitachi; Toshiba et al. (United States District Court for the Eastern District of Texas) – Representation of Fujifilm, Hitachi, and Toshiba in series of patent infringement actions relating to Internet applications, software, and business methods.
  • DR Systems, Inc. v. Fujifilm Medical Systems USA, Inc. (United States District Court for the Southern District of California) – Representation of Fujifilm in patent infringement case relating to medical diagnostic imaging equipment.
  • Plasma Physics Corp. and Solar Physics Corp. v. Agilent Technologies et al. (United States District Court for the Eastern District of New York) – Representation of Plasma Physics Corp. and Solar Physics Corp. in series of patent infringement suits relating to semiconductor chip manufacturing technology and plasma enhanced chemical vapor deposition (PECVD) processing.

IP Transactional Matters and Counseling

  • Columbia University – prosecution of patents and counseling involving various technologies, including relating to video encoding and MPEG technologies and standards.
  • The Hartford Insurance – counseling regarding patent issues involving business method patents and patent applications.
  • Liberty Media – counseling and due diligence regarding intellectual property issues.
  • MasterCard International Inc. – counseling regarding patent portfolio management and patent prosecution.
  • Vidyo, Inc. – patent counseling, prosecution and management of a worldwide patent portfolio directed to audiovisual data compression and transmission.
  • Fidessa Corp. – counseling and patent prosecution regarding software and trading platform technologies.
  • Various clients – counseling, opinion work, and negotiation of patent licenses and settlement agreements resolving numerous IP litigation matters.

Publications, Speeches and Presentations

Publications

  • "Antitrust Counterclaims in Patent Infringement Actions Brought by Patent Assertion Entities," The AIPLA Antitrust News, January 2014, (Josh Sibble, co-author)
  • "Patents in a 3D World: The Challenge of the Second File-Sharing Revolution," Intellectual Property Today, January 2014
  • "Practical Considerations During the Uncertain Times of Software Patent Eligibility," IP Litigator, Nov/Dec 2013, (Amrita Chugh, co-author)
  • “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, "Litigation Involving NPEs," NYIPLA Patent Seminar, January, 2014
  • Moderator, “Cost Effective Strategies for Managing Today’s IP Controversies,” Baker Botts Seminar, October 2013
  • Panelist, “Post-Grant Proceedings Under the AIA - Strategies for Effective Use of Inter Partes Review and Other Procedures at the PTO,” Baker Botts Seminar, May 2013
  • Speaker, “Patent Litigation and the America Invents Act: One Year Later,” Rochester Intellectual Property Law Association Fall Symposium, November 2012
  • Panelist, “The Patent Reform Act (And Other Developments): The Implications For Your Patent Practice,” New York City Bar Association, January 2012
  • Speaker, “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
  • Speaker, “Protecting Your Company Against Patent Trolls,” Rochester Intellectual Property Law Association IP symposium, November 2005