Robert C. Bertin

Rob has tried cases in federal district court and before the International Trade Commission. He also has experience in adversarial proceedings at the US Patent and Trademark Office and appeals to the US Court of Appeals for the Federal Circuit and US Supreme Court. He regularly advises clients on IP portfolios; various patent, trademark, copyright, and trade secret issues and strategies; and IP-related aspects of M&A and licensing transactions. Rob’s IP practice has been recognized in Super Lawyers (2013–2018) and by the American Bar Foundation. He has been active in Bar Associations as a past chair of the patent, trademark, and copyright section of the Bar Association of DC and a past committee chair of the American Bar Association’s Section of IP Law.

Rob’s practice encompasses a wide array of technologies, including representing clients with IP issues in wireless telecommunications devices, systems, and services; landline telecommunications devices, systems, and services; computer technology, including software, hardware, Internet, microprocessors, memory, digital signal processors, encryption, data compression, MPEG, object oriented programming, circuit design, and semiconductor technology; electronic commerce, including electronic selling, buying, advertising, billing, auctioning, reservation, and other online businesses; medical devices, including biopsy needles, catheters, flow control devices, balloon technologies, and arterial stents; and various other technologies. He has also represented clients involved in diverse automotive technologies and is an active member of Morgan Lewis’s Electric Vehicles working group.

Prior to practicing law, Rob was an electrical engineer with IBM Corporation’s Federal Systems Division, where he designed circuits for logic, memory, and microprocessor chips and wrote technical studies regarding satellite systems and radiation-induced failure mechanisms in semiconductor devices. Rob has published papers and has been awarded two US patents for his work in these areas.

Prior to joining Morgan Lewis, Rob was a partner in the litigation practice of another international law firm.

• Flypsi, Inc. v. Dialpad, Inc. (WDTX 2021) — Lead counsel defending Dialpad in patent litigation
• Valyrian, Inc. v. Dialpad, Inc. (D. Del. 2021) — Lead counsel defending Dialpad in patent litigation
• Cornell Research Foundation, Inc. v. the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (CAFC 2020) — Representing Cornell in the appeal of inter partes review decisions on six patents by the US Patent and Trademark Office
• Ubiquiti Networks, Inc. v. Cambium Networks, Inc. et al (N.D. Ill. 2019) — Lead counsel representing Ubiquiti in a copyright and breach of contract case
• Orange, S.A., 3G Licensing, S.A. and Koninklijke KPN NV Corp. v. BlackBerry Limited et al. (EDTX 2017) — Defending BlackBerry through Markman, summary judgment, and close of fact discovery, and pre-trial procedures and settlement
• Vander Intermediate Holdings III Corp. v. United States Patent and Trademark Office (EDVA 2016) — Representing trademark owner in a civil action to appeal denial of a trademark registration
• Voice2Text Innovations LLC v. Onvoy, Inc. (EDTX 2015) — Lead counsel defending Onvoy against patent infringement claims involving speech recognition, voicemail and voice-over-IP technology; resolved favorably after scheduling conference
• Sentegra, LLC v. LG Electronics MobileComm U.S.A., Inc. et al (SDNY 2015) — Lead counsel defending LG against patent infringement claims involving ecommerce and LG’s mobile phones; resolved favorably after responsive pleadings and case conference
• Straight Path IP Group v. Vocalocity d/b/a Vonage Business (EDVA 2014) — Lead counsel defending Vonage Business through Markman, summary judgment hearings, close of fact discovery, final trial conference, and mediation in a patent case involving Voice-over-IP patents acquired from Net2Phone. Favorably resolved the case within two weeks of trial at mediation
• Innovative Display Technologies LLC v BlackBerry Limited et al. (EDTX 2014) — Defending Blackberry in a patent infringement case involving features of LCD displays found in mobile phones; resolved favorably
• BlackBerry Limited v. Cypress Semiconductor Corporation (SDCA, NDTX, USPTO 2014) — Defending Blackberry in a patent infringement action involving Cypress patents on capacitive touchscreen displays and USB, representing Blackberry in asserting counterclaim patents against Cypress involving USB technology in SDCA and in a new action in NDTX; co-counsel petitioning the US PTO in IPR proceedings to declare unpatentable all six Cypress patents; resolved favorably
• Oculus Info Inc. v. Oculus VR (EDVA 2014) — Representing Oculus VR in this trademark preliminary injunction case brought by Oculus Info Inc. after Facebook announced its $2 billion acquisition of Oculus VR; defeated the PI motion and the case resolved favorably shortly thereafter
• Telinit (EDTX 2014) (Patent case on VoIP technology) — Lead counsel defending multiple parties in sequential patent infringement actions involving VoIP call features; reached favorable settlement after responsive pleadings
• 3D Systems Inc v. Formlabs Inc and Kickstarter (DSC 2013) — Defending Formlabs and Kickstarter in patent litigation involving the Form1 printer project realized and commercialized through Kickstarter and obtaining a dismissal of the case
• Bear Creek v. Aptela I,II (EDVA 2012, 2013) — Defending Aptela in a patent case involving integration of VoIP and telephone company networks; securing a dismissal and representing Aptela in a refiled case consolidated in Delaware in a multi-district litigation proceeding that is presently stayed
• Defending Attorney X in Disbarment Proceedings at the USPTO. Representing an attorney accused of violating Patent Office Rules of Practice at the office of enrollment and discipline and through summary judgment proceedings, reaching a settlement just prior to trial
• Defeated a preliminary injunction request and obtained summary judgment for a major technology company against all claims that it had engaged in unfair competition and interfered with plaintiff's business relationships, and successfully defended trial court decision on appeal
• Defended a major technology company against allegations that internally developed technology infringed asserted software patents, successfully invalidating multiple patents in an early summary judgment decision
• Successfully defended a major technology company against allegations that internally developed open-source software infringed asserted patents, and defeated a preliminary injunction request. Our team obtained a case-dispositive claim construction, and affirmance of that result from the Federal Circuit
• Center One v. Deltathree et al. (EDTX 2011) — Lead counsel defending Deltathree in this case through discovery, contentions and claim construction exchanges; resolved favorably thereafter 
• Klausner (EDTX 2011) — Lead counsel defending various parties against patent infringement actions brought by Klausner and subsequently IPVX in the Eastern District of Texas related to visual voicemail technology
• Northpoint Technology Ltd. v. MDS America, Inc. and MDS International S.A.R.L. (Southern District of Florida) — Represented defendants through jury trial and appeal in a patent infringement case involving Northpoint’s patents on terrestrial wireless broadband technology called “MVDDS”; obtained favorable verdict invalidating all patent claims on four separate grounds, affirmed on appeal by the Court of Appeals for the Federal Circuit in a decision reported at 413 F.3d 1301 
• Bavarian Nordic v. Acambis (US International Trade Commission) — Representing Bavarian Nordic in patent litigation involving patents and trade secrets on small pox vaccine through trial and appeal, reaching a favorable post-appeal settlement
• H.S. Hospital Service S.P.A. v. Medical Device Technologies (Northern District of Florida) — Represented plaintiff; won partial summary judgment of trademark infringement and unfair competition; case settled 
• Technology Patents Llp v. M3 Wireless et al. (District of Maryland) — Represented M3 Wireless Ltd. in a patent case covering international text messaging brought by Technology Patents LLC against 130 defendants; won a dismissal for lack of personal jurisdiction 
• Voxpath v. Verizon et al. (Eastern District of Texas) — Represented Covad, New Global Telecom, Bandwidth.com and Apptix in patent litigation against VoxPath involving a patent on hosted VoIP, and reaching favorable settlements for each defendant 
• Accessline v. TPS Call Sciences (Distrcit of New Jersey) — Represented declaratory judgment plaintiff in a patent case involving multiple patents and hundreds of patent claims covering “one number” telephone technology, which settled favorably 
• Microchip v. Chamberlain (International Trade Commission, Southern District of Illinois) — Represented plaintiff Microchip in patent litigation relating to encryption technology used in garage door openers; reached favorable settlement for Microchip 
• Nacre A/S v. Silynx Communications, Inc. (District of Maryland) — Represented defendant Silynx Communications in patent litigation relating to in-ear hearing protection and enhancement technology; reached a favorable settlement 
• The Massachusetts Institute of Technology v. Abacus Software, Inc. (Eastern District of Texas) — Represented co-defendant Fujitsu in a patent case involving color mapping technology for scanners and printers; reached a favorable settlement 
• SanDisk v. Alcatel-Lucent (Northern District of California) — Represented SanDisk as a declaratory judgment plaintiff in a patent case involving Alcatel-Lucent patents on MP3 technology 
• Colt Defense LLC v. Heckler & Koch Defense, Inc. (Eastern District of Virginia) — Represented plaintiff Colt Defense in case involving patented handguards, false advertising and unfair competition related to the M4 rifle; case settled approximately three weeks prior to trial 
• Micron v. Lucent (Eastern District of Virginia) — Represented defendant Lucent in a patent infringement case; successfully opposed venue in EDVA and case was transferred out of EDVA 

Amicus Curiae Briefs

• Knoerr Bremse v. Dana (Federal Circuit) — Submitted on behalf of Bar Assn. of DC 
• In Re Seagate (Federal Circuit) — Submitted by Bar Assn. of DC 
• Merck v. Integra (Federal Circuit) — Submitted on behalf of Bavarian Nordic 
• Tafas v. Dudas (Eastern District of Virginia) — Submitted by Bar Assn. of DC