Robert C. Hilton advises and assists clients in all aspects of their intellectual property matters. His practice includes building and managing large and strategically important patent portfolios for companies that range in size from Fortune 500 companies to emerging technology start-ups.
Robert frequently counsels clients and provides opinions on matters of patent infringement, invalidity, patentability, and performs freedom-to-operate investigations to evaluate and minimize risks of patent infringement by new products and product lines.
Robert also represents clients in disputes including federal patent infringement matters and complex adversarial proceedings in the United States Patent & Trademark Office such as Inter Partes and Covered Business Method Reviews.
He has argued and obtained favorable decisions on behalf of clients appearing as Petitioners, as well as those appearing as Patent Owner in these post-grant proceedings. Robert’s representation of clients spans both jurisdictional lines and many diverse fields of technology.
He has pursued and obtained patent protection for clients in over 75 countries, and this international experience collaborating with foreign attorneys and navigating the laws of both U.S. and foreign jurisdictions allows him to craft tailored prosecution strategies to achieve the right balance between maximizing patent protection and controlling costs.
He has substantial experience in patent issues facing the energy, telecomm, medical device, and aerospace industries. In the energy industry, he has represented traditional oil and gas companies, most significantly in relation to downhole tools and methods associated with exploration and production.
He has also represented 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 in the areas of software, semiconductors, consumer products, and other mechanical and electro-mechanical devices. 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.
Robert’s work with investors, financial service providers, and senior executives requires him to take a business-minded approach to addressing clients’ intellectual property needs.
- Gamino v. American Telephone & Telegraph Company, et al. (D. Del. 2012) — Represented defendant Sprint in patent infringement action involving payment and dialing methods for completing tolled telephone calls. Case settled and dismissed.
- Wolf Run Hollow, LLC v. Herring Bank et al. (N.D. Texas [Dallas Div] 2010) — Represented defendant Benchmark Bank in a patent infringement action relating to secured transactions. Case settled and was dismissed shortly after filing.
- Jamak Fabrication-Tex, Ltd. v. Pylon Mfg. Corp. (N.D. Tex. [Ft. Worth Division] 2009) — Represented plaintiff Jamak in a declaratory judgment action against Pylon Manufacturing asserting non-infringement and invalidity of Pylon’s patent. Case settled shortly after filing.
- Robert Bosch, LLC v. Jamak Fabrication-Tex, Ltd, et al. (D. Del. 2008) — Represented Jamak in a patent infringement suit brought by Bosch. Case settled and was dismissed shortly after filing.
- The University of Texas School of Law, JD, 1999
- The University of Texas at Austin, BSME, 1994
- U.S. Court of Appeals for the Federal Circuit
- U.S. District Court for the Eastern District of Texas
- U.S. District Court for the Northern District of Texas
- U.S. Patent and Trademark Office
- Member, American Intellectual Property Law Association
- Member, Dallas Bar Association
- Member, Intellectual Property Law Section of the State Bar of Texas
Rate : $$$