Robert M. Asher

Robert Asher leads the post-grant proceedings team at Sunstein leveraging his deep experience in patent litigation and patent prosecution. He is an astute and accomplished advocate for inventors and businesses affected by patents. Clients have been richly rewarded from Bob’s litigation guidance, appellate advocacy and patent prosecution work. He is the chair of Sunstein’s PTAB Litigation practice group.

Our team won a $14.6M verdict for patent infringement of infrared thermometer patent invented by MIT alum and company founder.

He has been sought out for his expertise in defending valuable patents challenged in inter partes review and reexamination, while the patents were being asserted in patent infringement litigation.

Persuaded the Federal Circuit Court of Appeals to limit reliance by the Patent Trial and Appeal Board (PTAB) on “common sense” to invalidate patents. The successful appeal is reported in the case of Arendi S.A.R.L. v. Apple.

Argued the In re Swanson appeal forcing the Federal Circuit Court of Appeals to address the issue of substantial new question of patentability in view of parallel litigation in the district courts.

Developed patent portfolios that have contributed to significant acquisitions, licenses and litigation settlements.

A software patent pioneer, having been one of the first to patent an expert system in the mid-1980’s.Prosecuted a patent application to allowance in less than six months using an accelerated examination procedure.

He has made extensive use of his knowledge of patent office tactics and procedures. In one situation, by figuring out how reexamination or reissue could be used effectively to strengthen the client’s patent, Bob was able to deflate a challenge to the existing license, preserving the royalty payments to the client.

Defeated a patent infringement claim for a Fortune 500 client in district court and the Federal Circuit by successfully making use of the doctrine of judicial estoppel.

Bob has challenged patents in the United States Patent and Trademark Office by filing reexaminations or protests that successfully limited the scope of the competitor’s patents.

Bob has rendered opinions regarding validity or infringement and assisted with designing around patents. In one case, Bob’s opinion of invalidity was challenged in court and he was required to testify on behalf of our client. The court and jury were persuaded consistent with the logic of Bob’s opinion and testimony that the patents in question were invalid.

Bob has prosecuted patent applications for a wide variety of businesses and technologies including integrated circuits, data storage, interactive television, financial services, medical equipment, pharmaceuticals, food, digitizing tablets, bottling and weighing equipment, microwave antennas, caching, scanning, printing, telecommunications and bar codes.

Bob devotes a significant portion of his practice to intellectual property litigation matters in which he has worked on behalf of numerous companies, of national and international scope. Specific patent cases have involved technologies including automotive trim carpets, interactive cable television, power converters, solar cells, microwave antennas, consumer electronic appliances, satellite tuners, robot arms, call routing, flame detectors and ACL surgery. In other intellectual property litigation, he has addressed issues of copyright infringement, trade dress and trademark infringement.

Representative Cases

• Exergen Corp. v. KAZ USA, Inc.
  U.S. District Court for the District of Massachusetts
• VLT, Inc. v. Power One, Inc.
  U.S. District Court for the District of Massachusetts and Federal Circuit Court of Appeals (lead attorney)
• Astec International v. Sharp Electronics
  U.S. District Court for the District of Colorado
• Plasma Physics v. Sanyo Electric and Sears Roebuck
  U.S. District Court for the Northern District of Illinois
• Gates Formed Fibre v. Delaware Valley Corp.
  U.S. District Court for the District of Massachusetts
• Terry Scheller v. Leather Loft Store et al.
  U.S. District Court for the District of Massachusetts
• Andrew Corp v. Gabriel Electronics, Inc.
  U.S. District Court for the District of Maine
• Knop et al. v. Allen
  U.S. District Court for the District of Maine (interference)
• ICTV v. Worldgate
  U.S. District Court for the Eastern District of Pennsylvania
• 3M v. Briteline
  U.S. District Court for the District of Minnesota
• McGuire et al. v . Acufex
  U.S. District Court for the District of Massachusetts
• Amgen v. Hoffman La Roche
  U.S. District Court for the District of Massachusetts
• Bowers v. Baystate Technologies
  U.S. District Court for the District of Massachusetts
• Vornado v. Duracraft
  U.S. District Court for the District of Kansas
• Scansoft, Inc. v. ART Advanced Recognition Technologies
  U.S. District Court for the District of Massachusetts
• Honeywell Consumer Products, Inc. v. Windmere Corp. and White Westinghouse
  U.S. District Court for the District of Massachusetts
• Honeywell Consumer Products, Inc. v. Windmere Corp.
  U.S. District Court for the District of Massachusetts
• Lemelson v. United States and Cincinnati Milacron
  U.S. Court of Claims
• Bryant v. Electronics Corporation of America
  U.S. District Court for the District of Massachusetts
• Etonic v. Weight-Rite Golf Corp.
  U.S. District Court for the District of Massachusetts

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