Robert (Rob) Kramer is a partner in Dentons' Intellectual Property and Technology practice and is the co-chair of the firm’s national Patent Litigation practice. He is resident in the Silicon Valley and San Francisco offices.
Rob specializes in patent infringement litigation, trade secrets, licensing and other complex business cases. He represents clients across various industries in federal and state courts, judicial and private arbitrations and US International Trade Commission (ITC) patent investigations.
Rob is a trial lawyer with decades of experience representing clients in patent infringement cases in district courts throughout the country, including in California, Delaware and the Eastern District of Texas. He has represented clients in patent litigations involving a wide range of products and industries, including wireless technologies, networking, smart grid and utility metering technologies, data compression and transmission, microprocessors, Power over Ethernet (PoE), IEEE 802.3, programmable logic arrays (PLAs), semiconductor manufacturing and packaging equipment, light emitting diodes (LEDs) and optics, databases, software, graphics, electronic gaming, industrial equipment, life sciences, chemicals and adhesives, biometric authentication and smart grid utility systems, as well as Internet and business method patents. He is one of the firm’s leading and most experienced patent litigators.
Rob is a frequent author and lecturer on patent and intellectual property law topics. He served as an adjunct professor of law at Temple University and a guest lecturer at Waseda University in Tokyo teaching patent law. Rob is also a contributing author to a recent, authoritative book on intellectual property law and strategy, Edison in the Boardroom Revisited: How Leading Companies Realize Value From Their Intellectual Property (Appendix: "A Closer Look at IP Damages"). He served on the board of governors of the Association of Business Trial Lawyers (ABTL), a 2,000-member organization of trial lawyers and judges, and he is consistently honored as a Northern California "Super Lawyer" in Intellectual Property Litigation, including in 2015. He serves annually as a moot court judge in the moot court program at the University of California Hastings College of the Law.
Rob has extensive experience representing (and litigating against) Japanese and other Asian companies in patent litigation and adversarial cross-licensing disputes. He lived in Tokyo for three years and was a registered Gaikokuho-Jimu-Bengoshi and a member of the Daini Tokyo Bar Association while practicing law as a patent litigation partner in Morrison & Foerster’s Tokyo office.
Rob is a member of the California and New York state bars and is admitted to all California and New York state and federal courts, the District Court for the Eastern District of Texas, the District of Colorado, the Second and Ninth Circuit Courts of Appeals and the Court of Appeals for the Federal Circuit. He has been admitted pro hac vice on numerous cases to district courts in Delaware, Florida, Michigan, New Jersey and Oklahoma. He is a member of the American Bar Association, the ITC Trial Lawyers Association and the San Francisco Bar Association. He started his career as a judicial law clerk for Judge Richard D. Simons, New York Court of Appeals, and then practiced as an IP litigation associate in New York City for five years before moving to the San Francisco/Silicon Valley area.
Dentons is a top-tier global law firm with approximately 2,600 lawyers and professionals in more than 75 locations spanning 50-plus countries across the US, Asia Pacific, Canada and Europe. The firm’s Intellectual Property and Technology practice consists of more than 100 lawyers and professionals, including numerous experienced electrical engineers (EEs), computer scientists, chemical engineers and other technically trained professionals holding advanced degrees. Rob co-chairs the firm’s Patent Litigation practice, managing teams of these highly experienced, technically trained patent litigators. The IP group recently ranked in the top 10 percent of all law firms for intellectual property litigation.
- Linex Technologies, Inc. v. Silver Spring Networks, Inc. (S.D. Florida). Lead counsel representing Silver Spring Networks, a leading smart energy grid networking company, in patent infringement litigation in the Southern District of Florida in a "rocket docket" case involving mesh network, spread-spectrum data communication systems.
- Finisar Corp. v. Nistica, Inc. (N.D. Cal.). Lead counsel representing Nistica, a subsidiary of Fujikura, Ltd., in a six-patent infringement lawsuit between competitors Finisar Corp. and Nistica involving wavelength selective switches (WSS) and reconfigurable optical add-drop multiplexer (ROADM) linecards and optics technologies, including micro electronic mechanical system (MEMS) mirrors and liquid crystal on silicon (LCOS) technology for optical switching.
- Blue Spike, LLC v. 3M Cogent, Inc. (E.D. Texas). Lead counsel representing 3M Company in multi-patent infringement litigation in the Eastern District of Texas, involving electronic signal abstracting and biometric authentication systems and technologies.
- EON IP Holdings, LLC v. Landis+Gyr, Inc. et al. (E.D. Texas). Lead counsel representing Silver Spring Networks, Inc., a leading Silicon Valley "smart grid" networking company, in multi-patent infringement litigation in the US District Court, Eastern District of Texas, involving mesh network data communications systems.
- Eclipse IP LLC v. John Fluevog Ltd. (D.N.J.). Lead counsel for defendant defending patent infringement lawsuit in the district court in New Jersey involving computer-based notification and authentication systems used in retail electronic commerce systems.
- Fitness Anywhere, LLC d/b/a TRX, Inc. v. BeaverFit, Ltd. et al. (Superior Court, San Francisco). Representing defendant, a leading British fitness equipment designer and manufacturer, in a competitor dispute involving misappropriation of trade secrets and rights protected by nondisclosure agreements and unfair competition.
- Sheehan Genetics LLC and Benkirk, Inc. v. Jakov P. Dulcich & Sons LLC (E.D. Cal.) Lead counsel representing Sheehan Genetics LLC, a UK-based plant genetics company, and its California subsidiary and partner, a developer of grape varieties, in a declaratory judgment patent litigation in the Eastern District of California against a competitor, involving a plant patent and alleged misappropriation of technology.
- Shared Medical Resources, LLC & CDX Diagnostics, Inc. v. Histologics LLC (C.D.Cal.). Lead counsel representing defendant Histologics LLC in patent infringement litigation between competitor medical device companies involving minimally invasive biopsy products.
- Sentaida International, Inc., Sentury Tire Americas, Inc. v. Toyo Tire and Rubber Co., Ltd. (C.D. Cal.). Representing leading tire manufacturer in declaratory judgment case against competitor seeking declaration of noninfringement and invalidity of patents covering automotive tires in federal court in Los Angeles.
- Road Science, LLC v. Telfer Oil Company et al. (E.D. Cal.) and Road Science, LLC v. Shilling, Inc. (N.D. Oklahoma). Lead counsel representing defendants, innovative emulsion and surfacing companies, in patent infringement lawsuits in the district courts in Northern California and Oklahoma relating to Novachip road surfacing technologies.
- BS v. Fujitsu America, Inc. et al. (E.D. Texas). Lead counsel representing Fujitsu America, Inc., and related Fujitsu companies, in patent infringement litigation in the US District Court for the Eastern District of Texas. The defendant was accused of infringing on multiple US patents involving electronic signal processing and related technologies.
- BigBand Networks, Inc. v. Imagine Communications, Inc. (Dist. Delaware). Lead counsel for defendant Imagine Communications, a well-known video compression company, in a multi-patent infringement lawsuit filed in the district court in Delaware by Imagine Communication's publicly traded competitor, BigBand Networks, Inc. The patents-in-suit cover high-speed video compression and transmission systems, such as those developed by Imagine and used by its customer Comcast and other cable television providers. The case settled on highly favorable confidential terms in December 2011.
- Bridgelux, Inc. v. Cree, Inc. (E.D. Texas) and Cree, Inc. and Trustees of Boston University v. Bridgelux, Inc. (N.D. Cal. and E.D. North Carolina). Represented Bridgelux, Inc., a leading venture-backed Silicon Valley high-power LED company, in a series of patent infringement cases against competitor Cree, Inc. These cases collectively involving five LED patents relating to epitaxial layer structures and epi growth techniques, electrode structures, improved light extraction techniques and GaN buffer layers, and were litigated heavily against a "big 5" LED company in multiple jurisdictions. Obtained a confidential settlement as a result of a successful strategy involving declaratory judgment actions presenting serious challenge to the validity and enforceability of competitor's LED patents.
- Greenville Communications LLC v. Verizon Wireless, T-Mobile et al. (Dist. N.J. and E.D. Mississippi). Represented T-Mobile in a patent infringement litigation involving ring back tone technology implemented in CDMA and GSM wireless communications systems. Achieved §1404 transfer of litigation from Mississippi to a more favorable forum in New Jersey, followed by a stay of district court litigation pending resolution of re-examination of patents-in-suit.
- Chrimar Systems, Inc. v. Foundry Networks LLC, Microsemi Corp. (PowerDsine Ltd.), D-Link Systems, Inc. (E.D. Michigan). Represented Foundry Networks (Brocade Communications Corp.), a leading provider of data networking equipment, in a patent infringement lawsuit focusing on IEEE 802.3af Power-Over-Ethernet (PoE) compliant switches, routers and midspan data communication ports and products, and involving defenses relating to reasonable and nondiscriminatory (RAND) licensing requirements arising from the patentee's participation in an industry standards-setting organization. The case was litigated through a successful Markman claim construction hearing and resolved favorably on summary judgment of invalidity and noninfringement
- Ariad Pharmaceuticals, Inc. v. Eli Lilly & Company, 598 F.3d 1336 (Fed. Cir. 2010). Represented amicus RealNetworks, Inc., in appeal in the US Court of Appeals for the Federal Circuit in a significant en banc case changing the scope and meaning of the written description requirement under Section 112 of the patent statute.
- RealNetworks, Inc. v. Burst.com, Inc. (N.D.Cal.). Represented RealNetworks, a pioneer in online streaming and compression of audio and video data and provider of services for digital entertainment companies, defending the company in multiple video compression patent infringement cases in the Northern District of California. Resolved the case on highly successful confidential terms.
- Ivivi Technologies, Inc. v. Regenesis Biomedical, Inc. (D.N.J.). Defended a medical device company in a competitor patent infringement suit filed by the maker of a patented medical device designed for noninvasive treatment of soft tissue wounds and therapeutic treatment. Settled the case on highly favorable confidential terms.
- Litepanels LLC v. Gekko Technology Ltd.; Litepanels LLC v. Sony Electronics, Inc.; and Litepanels LLC v. Switt Electronics Inc. (E.D. Texas and N.D. Cal.). Represented a leading developer and seller of LED illumination technologies and products used in the film, commercial and photographic industries in multiple patent infringement litigations in the Eastern District of Texas, enforcing the client's patents against a competitors' LED lighting systems. Settled the cases on highly favorable confidential terms following victory in a Markman claim construction hearing.
- Mitchell v. Fujitsu Limited and Fujitsu America, Inc. (N.D. Cal.). Defended Fujitsu in patent litigation regarding bi-memory controlled CPU architecture, microprocessor and switching technologies, obtaining a highly favorable settlement achieved in wake of a motion for summary judgment of patent invalidity.
- Patriot Scientific Corp. and Technology Properties Ltd. v. Fujitsu Limited and Fujitsu America, Inc. (N.D. Cal.). Defended Fujitsu in patent litigation directed at high-speed microprocessor technology involving the Moore microprocessor patent portfolio asserted by Patriot Scientific and Technology Properties Ltd. (TPL, now Alliacense).
- Avago Technologies, Ltd. v. IPtronics, Inc. (N.D. Cal.). Represented a leading Silicon Valley technology company in patent infringement litigation enforcing the client's patents against a competitor's fiber optics and optoelectronics products, including VCSEL laser drivers.
- SecuGen LLC v. NITGen Co., Ltd. (American Arbitration Association [AAA] arbitration; N.D. Cal.). Represented SecuGen, a Silicon Valley developer of optical biometric authentication technology, as lead IP trial counsel in a complex AAA arbitration against a competitor, NITGen, involving more than 25 claims and counterclaims at issue, including patent infringement, copyright, trade secrets, trade libel, trademark and license-based claims. The matter was resolved following an extensive four-week arbitration hearing and related district court proceedings.
- Fujitsu Ltd. v. Samsung Electronics, Ltd. (US ITC). Successfully defended Fujitsu in ITC §337 patent infringement and related multiple simultaneous district court litigations in US and Europe relating to DRAM and SRAM thin film semiconductor processing deposition, etching and fabrication techniques and circuitry. Obtained a favorable confidential settlement after completion of the ITC hearing and in the course of district court proceedings.
- Gemstar-TV Guide International v. EchoStar et al. (ITC). Successfully represented EchoStar against Gemstar-TV Guide International in what has been called the biggest-ever patent case before the ITC. Gemstar claimed that EchoStar, Scientific-Atlanta, Inc., and Pioneer imported set-top boxes that infringed four US patents. EchoStar won on multiple grounds, including noninfringement; no domestic industry; and as to the main patent, patent misuse and invalidity for failure to join a co-inventor.
- TeleChem International, Inc. v. Apogent Technologies and BioRobotics Inc. and TeleChem International, Inc. v. Point Technologies, Inc. (N.D. Cal.). Represented the patentee in patent infringement litigation between competitor companies relating to technologies and micro-research tools employed to fabricate microarrays of DNA and other chemical and biochemical substances. Achieved a highly favorable confidential settlement upon completion of expert discovery driven by results of a Markman claim construction strategy and hearing.
- Katz v. WellPoint, Inc. (E.D. Texas and C.D. Cal.). Represented WellPoint, Inc., a leading Fortune 50 health care company, in a patent infringement suit filed by Ronald A. Katz Technology Licensing LLC. WellPoint achieved a successful confidential settlement.
- LG Philips Ltd. v. Chunghwa Picture Tubes, Ltd. (Dist. Del. and C.D. Cal.). Represented Chunghwa Picture Tubes, Ltd. (CPT), a leading Taiwanese manufacturer of LCD flat panel displays, in patent infringement litigations involving multiple patents covering thin film transistor LCD flat panel display and notebook computer technologies. Achieved a successful resolution aggressively defending CPT in multi-front patent litigations, including jury trials in the district courts in the Central District of California and in Delaware.
- International Manufacturing & Engineering, Inc. v. Eastman Kodak Company (S.D.N.Y. and N.D.N.Y.). Successfully represented Eastman Kodak in patent litigation relating to multiple LED patents. Kodak successfully won a motion to transfer the case to its home district in Rochester, NY, and then achieved a highly successful confidential settlement amid Kodak's pending summary judgment motion with the district court litigation dismissed, and thereafter litigating disputed inventorship and patent ownership issues in an interference proceeding in the United States Patent and Trademark Office.
- Sinclair International, Inc. v. FMC Corp. (N.D. Cal.). Represented Sinclair International against a competitor, FMC Corp., in a patent litigation involving Sinclair's patents covering automatic high-speed labeling equipment. Sinclair obtained a preliminary injunction, a remedy rarely granted in patent cases, barring FMC from making and selling competing equipment covered by Sinclair's patents.
- Intel Corp. v. Advanced Micro Devices (AMD) Corp. (N.D. Cal.). Successfully represented AMD in multi-action microcode "chip wars" cases relating to Intel's infringement allegations directed at AMD's 286/386 microcode, including trial and injunction motions in the Northern District of California.
- RealVision Inc. v. MacroTech Semiconductor Corp. (Arbitration conducted under auspices of International Court of Arbitration ("ICC").) Served as an ICC arbitrator in an intellectual property dispute between a Taiwanese semiconductor fabrication company and a Japanese technology company. The 3-arbitrator panel conducted an arbitration hearing in San Francisco and issued a written decision under ICC rules.
- Repeatedly named as a "Super Lawyer" by San Francisco Magazine/Daily Journal, including in 2015
- Quoted, "How Dentons is Going Global," NewLegal Review, Legal Strategy Review, February 13, 2014
- Contributing author, "A Closer Look at IP Damages," Edison In The Boardroom Revisited: How Leading Companies Realize Value from Their Intellectual Property, Appendix C, John Wiley & Sons, 2011
- Co-author, "What Did You Invent?: The Federal Circuit En Banc Revisits The Patent Law's Written Description And Enablement Requirements," Westlaw Journal Intellectual Property, Vol. 16, No. 24, March 23, 2010
- Co-author, "The Federal Circuit's En Banc Consideration of Claim Construction in Phillips v. AWH Corp.," Patent Strategy & Management, ALM, March 2005
Activities and Affiliations
Rob serves as pro bono legal counsel for Kids Cooking For Life, a bay area nonprofit corporation, providing programs for economically disadvantaged children teaching the importance of nutrition and healthy cooking and eating habits addressing childhood obesity diseases such as type 2 diabetes.
- Speaker, Silicon Valley Association of General Counsel (SVAGC), 26th Annual All Hands Meeting, "Patent Litigation Strategy in 2014," Santa Clara Convention Center, CA, November 2014
- Speaker, IP Strategy Summit: Patent Enforcement, "Post-Grant Review, Inter Partes Review ("IPR): Coordinating District Court and ITC Patent Litigation with IPR Strategy," Palo Alto, CA, June 19, 2014
- Speaker, the IP Defense Summit, "Patent Infringement Litigation Between Competitor Companies: Advanced Strategy & Management Issues," Four Seasons, Palo Alto, CA, January 21, 2014
- Speaker, Silicon Valley Association of General Counsel (SVAGC), 25th Annual All Hands Meeting, "Advanced Management of IP & Patent Litigation Risks," Santa Clara Convention Center, CA, December 4, 2013
- Speaker, IP Law & Management Institute, "Successfully Managing Your IP Assets: Advanced Strategies for IP Management, Risk Assessment and Managing Patent Litigation," San Diego, CA, November 3, 2013
- Speaker, IP Strategy Summit: Patent Enforcement, "Likely Defenses Presented When Enforcing Your Patents Against Competitors: Moves and Counter-Moves," Palo Alto, CA, October 17, 2013
- Speaker, "Strategies in Light" 14th annual LED and lighting conference, "IP Business and Strategies in the LED Industry," Santa Clara Convention Center, Santa Clara, CA, February 2013
- Speaker, Corporate Counsel Magazine's 4th Annual "Controlling Legal Costs" Conference, New York City, November 28, 2012
- Speaker, "Coordinating Patent Infringement Litigation with Reexamination: Strategies," American Lawyer Media IP Panel Speaker Program, Palo Alto, CA, April 2012
- Speaker, "The International Trade Commission (ITC) § 337 Patent Cases, NPEs, and Post-Grant Proceedings," Intellectual Property Owners Association (IPO), US Patent Office Inter Partes Proceedings Committee, November 2011
- Speaker, "Recent Developments in ITC Patent Litigation: Nonpracticing Entities (NPEs) in § 337 Patent Cases in the ITC," Corporate Counsel 7th Annual IP Counsel Forum, San Jose, CA, March 2011
- "Patent Reexamination Strategies In US Patent Litigation," Association of Corporate Counsel, San Francisco, CA, November 2009
- "The Essential Skills and What You Need to Know About Business Development," ABTL, San Francisco, CA, October 2009
- "Working With an Expert Witness at Trial: Strategies and Tips for Intellectual Property and Business Litigators," ABTL, LDC, San Francisco, CA, September 2008
- Association of Business Trial Lawyers, Northern California Division
- Board of Governors, 2008–2010
- Member, 1996–present
- Member, Intellectual Property Owners Association ("IPO"), 2004–present
- Member, British American Business Council chapter in Northern California, 2011–2012
- Member, San Francisco Bay Area Intellectual Property American Inn of Court, 2010–2011
- American Bar Association
- Member, Litigation Section, 1990–present
- Member, Patent, Trademark and Copyright Law Section, 1996–present
- Member, American Intellectual Property Law Association, IP Practice in Japan Committee, 2008–present
- Moot Court Judge, University of California, Hastings College of the Law, 2010–2011
- Member, Daini Tokyo Bar Association, 2000–2001
- Member, Federal Circuit Bar Association, 2004–present
- Member, International Trade Commission Trial Lawyers Association, 2005–present
- Member, Japan Society of Northern California, 2002–present
- Member, Licensing Executives Society, Northern California Chapter, 2004–present
- The Bar Association of San Francisco
- Co-chair, Public Education and Affairs Committee, Barrister's Club, 1998
- Member, 1996–present
Prior and Present Employment
Rob was an adjunct professor of law at Temple University School of Law, teaching a course contrasting patent litigation and strategy in the US and Japanese court systems.
In Japan, he was a registered Gaikokuho-Jimu-Bengoshi and a member of the Daini Tokyo Bar Association while practicing law for three years as a partner in Morrison & Foerster LLP's Tokyo office from 1998 to 2001. Rob has served as an International Court of Arbitration arbitrator and is experienced in representing clients in ITC §337 proceedings before the US ITC.
Rob started his career as a judicial law clerk for Judge Richard D. Simons, New York Court of Appeals, and then practiced as a litigation associate in New York City for five years before moving to the San Francisco Bay Area.
Prior to joining Dentons LLP, Rob was a partner in the patent litigation practice group at Morrison & Foerster and Howrey LLP firms.