Robert Hilton

With a business-minded approach, Robert assists clients with building and managing large and strategically important patent portfolios for companies that range in size from Fortune 500 companies to emerging technology startups.

Robert frequently counsels clients and provides opinions on matters of patent infringement, invalidity, and patentability and performs freedom-to-operate investigations to evaluate and minimize risks of patent infringement by new products and product lines. He also represents clients in disputes such as federal patent infringement matters and complex adversarial proceedings in the U.S. Patent and Trademark Office, including inter partes, post-grant, and covered business method reviews. Robert has argued and obtained favorable decisions on behalf of clients appearing as petitioners and patent owners in these post-grant proceedings.

He advises clients on aligning their IP portfolios with their business goals. Robert’s practice includes drafting and negotiating intellectual property licenses and other complex commercial agreements, including asset purchase agreements, lending agreements, supply agreements, and employee agreements. He works closely with private equity firms, venture groups and lenders seeking to invest in or lend to companies with intellectual property holdings. He regularly performs due diligence on acquisition targets or borrowers to ensure that the revenue generation of the company is properly aligned with its intellectual property assets.

He has deep experience in patent issues facing the energy, telecommunications, medical device and aerospace industries. In the energy industry, he has represented traditional oil and gas companies as well as companies focused on renewable energy sources including solar, wind, wave and tidal energy. In the medical device arena, Robert’s experience includes portfolio development for orthopedic, spinal, cardiac, advanced dressings and wound care devices. In addition to these areas, he also counsels clients who develop software, semiconductors and other mechanical and electro-mechanical devices, and consumer products.

Robert has pursued and obtained patent protection for clients in over 75 countries. His international experience includes collaborating with attorneys around the globe and navigating the laws of both U.S. and international jurisdictions, allowing him to craft tailored prosecution strategies to achieve a balance between maximizing patent protection and controlling costs.