Robert Hails has over twenty years of experience representing clients in patent matters, chiefly in the areas of patent enforcement and procurement. He represents clients against various non-practicing entities, both in litigation and beforehand, to respond to monetization efforts from such entities. He has experience arguing Markman hearings and taking witness testimony at trial.
Mr. Hails manages large scale portfolio reviews, often including hundreds of patents, to evaluate risks and opportunities for our clients. His experience spans a wide variety of electrical engineering disciplines, including communications, computer architectures, integrated circuit designs, pixel design, optical displays, and image and audio coding systems. He also has substantial experience reviewing communication standards and evaluating claims that patents are standards-essential.
Mr. Hails represents clients before the U.S. Patent and Trademark Office, and he argued the firm’s first inter partes review. He advises clients regarding development of patent development programs designed to identify and protect technologies that provide competitive advantages in the marketplace. For large corporate clients, Mr. Hails regularly manages teams of prosecuting attorneys. He also drafts patent applications and represents clients to secure patent rights for inventions.
In addition, Mr. Hails regularly presents at client seminars regarding patent portfolio development.
Representative Litigation Experience
- Skyllzone in district court litigation, enforcing a patent involving an on-line fantasy game. Skyllzone, LLC v. BDL Penn Enterprises (S.D.N.Y.)
- Sony in district court litigation, defending its digital cameras over infringement claims involving pixel designs. L-3 Communications Corp. v. Sony Corp. (D. Del.)
- Hewlett-Packard in ITC proceedings defending its computers, laptops, and printers over infringement claims involving flash memory card interfaces. Certain Computers and Computer Peripheral Devices, 337-TA-841
Representative Prosecution Experience
- Hewlett-Packard in a successful USPTO inter partes review of a patent involving flash memory controllers. Hewlett-Packard Co. v. MCM Portfolio, LLC, IPR 2013-00217
- Managing Kenyon prosecution efforts for Analog Devices, Apple, and SAP
Representative Enforcement Experience
- Represents clients to respond to monetization efforts from Alliacense, TPL Group, Personal Audio, Wi-LAN, Avistar, Xerox, NCR, IBM and Discovision