Photo of Robert M. Masters

Robert M. Masters

Partner
Washington, DC
F: +1.202.747.3370

Education

  • J.D., University of Baltimore, 1990
  • B.S., Pennsylvania State University, 1985
  • District of Columbia
  • Maryland
  • United Stated Patent and Trademark Office
  • United States District Court for the District of Columbia
  • United States District Court for the District of Maryland
  • United States District Court for the Eastern District of Texas
  • United States District Court for the Eastern District of Wisconsin
  • United States Court of Appeals for the Federal Circuit
Overview
Honors
Experience

Overview

Robert M. Masters is a partner in the Intellectual Property Practice Group in the firm's Washington, D.C. office.

Areas of Practice

Mr. Masters has extensive experience in all phases of intellectual property law. He routinely handles patent, trade secret, copyright and trademark/trade dress litigation in courts throughout the US, before the International Trade Commission, and before the US Patent Trial and Appeal Board (PTAB). In addition, Mr. Masters regularly advises clients on intellectual property licensing, negotiations, due diligence investigations, portfolio management and monetization, combating counterfeiting issues, best practices for corporate intellectual property legal departments, and on intellectual property issues arising in corporate mergers and acquisitions matters.

Mr. Masters represents clients on matters involving a wide range of technologies, including consumer electronics and semiconductor designs/processes, computer hardware, software including artificial intelligence, and apps for smartphones and tablets, secured internet/network communications and protocols, including Internet of Things (“IOT”); industrial equipment including welding and cutting equipment and consumables, telecommunications, financial services and technology ("Fintech"), automotive, medical devices, and sporting goods (including golf equipment), among many others. 

Honors

  • Leading Individual - Intellectual Property, Chambers USA
  • Leading Lawyer - Patent Litigation, Legal 500

Experience

Recent representations include:

  • Lead counsel for a European manufacturers of semiconductor testing devices and probes in a patent infringement matter, and defending their patent before the Patent Trial and AppealBoard.
  • Lead counsel for leading welding company in an international arbitration under the ICC in Zurich, Switzerland. The case involves allegations of breach of technology and license agreements involving the manufacture and sale of consumable welding equipment.
  • Lead counsel for an Asian joint venture entity in a matter involving the licensing of optical disk drives and related components, including issues of standard essential patents (SEPs) and fair, reasonable and non-discriminatory licensing (FRAND) agreements.
  • Counseled a multi-billion dollar company in an over-haul of its intellectual property department by utilizing IP corporate best practices and strategies to institute new policies and practices to build and maintain a robust patent/trademark portfolio.
  • Lead counsel for a Japanese company in a series of inter partes review (IPRs) of several patents directed to semiconductor design/process patents.
  • Counseled client in a patent infringement matter involving gambling and state lottery games.
  • Lead counsel for Japanese company in several matters defending its semiconductor-related patents before the Patent Trial and Appeal Board.
  • Lead counsel for Pacific Bioscience, a L’Oreal company, in a patent and trade dress infringement matter involving the company’s highly successful line of Clarisonic products. In this matter, we represented Pacific Bioscience in actions filed in US District Court and the US International Trade Commission to stop the importation of counterfeits and infringing devices by over 20 companies into the US, and to obtain a general exclusion order against all other infringing products.
  • Lead counsel for ESAB Group, Inc., a subsidiary of Colfax Corporation, in a matter involving claims of infringement of eleven patents and breach of contract/license agreement. The technology involved welding and cutting equipment. The case was filed against our client in the Eastern District of Wisconsin. After extensive discovery, we successfully resolved the case on terms favorable to our client.
  • Lead counsel for Motivate and New York City Bike-Share in patent/copyright infringement and trade secret/employment matters against one of its competitors involving the successful bike-sharing technology deployed in New York and other cities across the US.
  • Lead counsel for Cesca Therapeutics in a patent infringement matter involving point-of-care blood separation devices used to process and prepare cell concentrates from blood and bone marrow aspirates, and antitrust claims related to the filing of a sham litigation.
  • Co-lead counsel for Samsung in a patent infringement matter involving chipsets used in smartphones and tablets.
  • Lead counsel for several major investors in DeltaWing Technologies, an innovator in the design of narrow-front-track automobiles, in matters involving theft of trade secrets and defamation.
  • Lead counsel for Waddell & Reed Financial in a patent infringement matter involving the interpretation of a general public license used for open source software and a copyright infringement action involving the right to use accounting software.
  • Lead counsel for BMO Harris, N.A. in several patent infringement actions involving check imaging, authentication methods, and secure communications and methods of payment across websites from smartphone and related apps.
  • Lead counsel for NEC Corp. and NEC Corp. of America in patent infringement actions involving computer servers and network communications, protocols, and establishing secure communications.
  • Lead counsel for Flexsys America, LP in a patent infringement action involving antidegradients used for tires and other rubber products.
  • Lead counsel for Japanese manufacturer in a patent infringement action involving semiconductor memory devices.
  • Lead counsel for leading companies including Ford Motor Company, Goldman Sachs, Petco, Johnson & Johnson, GlaxoSmithKline, Delta Airlines, AstraZeneca Pharmaceuticals LP and others in a series of patent infringement actions involving authenticating and securing communications over a network.
  • Lead counsel for HTI IP, LLC and Networkfleet, Inc. in a patent infringement matter involving vehicle telematics.
  • Lead counsel for Konami Digital Entertainment in a patent infringement matter involving musical video games including Rock Band® and Rock Revolution® rhythm games.
  • Lead counsel for Bridgestone Sports Co., Ltd. in a patent infringement action against Acushnet Company involving golf ball.
  • Lead counsel for several Japanese manufacturers of consumer goods in patent infringement actions involving facsimile machines enabled to communicate via emails; digital photo processing; and LCD-based projectors.