Foley & Lardner LLP

Robert Silverman

Partner

Robert J. Silverman is a partner with Foley & Lardner LLP. His experience encompasses a broad range of technologies, including medical devices, pharmaceuticals, software, electronics, medical imaging systems, automobile engines, and sporting goods. Mr. Silverman is a member of the firm’s IP Litigation and Electronics Practices and Emerging Technologies, Medical Devices and Sports Industry Teams.

Prior to joining Foley, Mr. Silverman was a partner at Lowrie, Lando & Anastasi, LLP and a principal at Fish & Richardson P.C., where he counseled clients on a variety of intellectual property matters and represented them in litigation in state and federal courts and in the prosecution of patents before the United States Patent and Trademark Office.

He is the co-author of Instruments and the Imagination, a widely acclaimed book about the historical development of scientific instruments, published by Princeton University Press. His interest in intellectual property law grew out of his study of the history of invention and scientific discovery – subjects he began examining as an undergraduate at Cornell University, where he also undertook a broad education in science and engineering disciplines.

Mr. Silverman was selected for inclusion in the 2005 and 2006 Massachusetts Super Lawyers – Rising Stars® lists, a designation granted to approximately 2.5 percent of the best up-and-coming attorneys in the state. He is also the co-chair of the Intellectual Property Law Committee for the Boston Bar Association.

Mr. Silverman graduated from the New York University School of Law (J.D.), where he was a member of the Moot Court Board and the Jessup International Law Moot Court Team and was awarded the ASCAP Nathan Burkan Memorial Prize for Copyright Law; the University of Washington (Ph.D., history of science and technology); and Cornell University (B.A., cum laude, history).

Mr. Silverman is admitted to practice before the state and federal courts in Massachusetts, the U.S. Court of Appeals for the First and Federal Circuits, the District of Colorado, the Eastern District of Wisconsin, and he is registered to practice before the U.S. Patent and Trademark Office.

Representative Cases:

  • V-Formation, Inc. v. Benetton Group S.p.A. et al. Won summary judgment of noninfringement on behalf of manufacture of Rollerblade brand in line skates. This multi-patent case threatened to enjoin the majority of the Rollerblade product line. Briefed and argued the victorious appeal, reported at 401 F.3d 1307 (Fed. Cir. 2005), in which the Federal Circuit affirmed the summary judgment with a unanimous precedential opinion commenting on a cutting edge issue of the role of a patent’s cited prior art in construing the patent claims.
  • Evans Cooling Systems, Inc. v. General Motors Corp. Trade secret litigation regarding misappropriated engine cooling system technology. Demonstrated, through physical, testimonial, and forensic evidence, that GM engineering personnel forged documents, committed perjury, and falsified evidence in order to support allegations of prior development. Litigation included landmark Supreme Court of Connecticut decision – reported at 277 Conn. 496, 893 A.2d 371 (2006) – which was the first decision by the highest court of any state to determine the existence of a common law right to a trial by jury, for trade secret misappropriation. The decision was named in the Connecticut Law Tribune’s annual review of the most important decisions issued in the past year by the state’s highest court – the only intellectual property decision so honored.
  • Amersham Biosciences Corp. v PerkinElmer, Inc. (D.N.J.) / PerkinElmer LAS, Inc. v. Amersham Biosciences Corp. (D. Mass.). Represented manufacturer of life sciences instrumentation and biochemical assay products in multi-patent litigation concerning techniques and equipment used in drug discovery. Cases settled on favorable terms following successful court rulings, including establishment of waiver of privileged communications showing inequitable conduct by the opposing party.
  • Bio-Mimetics, Inc. v. Columbia Laboratories, Inc. (D. Mass.). Won summary judgment victory for plaintiff in a complex dispute concerning technology rights to a bioadhesive drug delivery system.
  • Beck Systems, Inc. v. ManageSoft Corp. (N.D. Ill.). Defended patent infringement claims against a vendor of systems for managing and distributing software applications throughout an enterprise. Case settled on favorable terms after establishing strong invalidity defenses to the asserted patents.
  • K-2 Corporation v. Rollerblade, Inc. (W.D. Wash.). Overcame two separate preliminary injunction motions that threatened the introduction of new product lines, in multi-patent litigation between major in-line skate competitors. Case settled on favorable terms after establishing successful defenses to the opposing party’s patents and infringement of the client’s asserted patent in related litigation.
  • Datamize, LLC v. Fidelity Brokerage Services, LLC (E.D. Tex.). Defended Fidelity against patent infringement claims from two patents concerning internet and graphical user interfaces. Case settled on favorable terms.
  • Fischer Imaging Corp. v. Trex Medical Corp. (D. Colo.) / Fischer Imaging Corp. v. Hologic, Inc. (D. Mass.). Represented manufacturer of medical imaging and computer-guided breast biopsy equipment in multi-patent litigation involving complex issues of disputed inventorship and patent correction and continuation practices. Cases settled after multiple Markman hearings and summary judgment motions.
  • Harris Corp. v. Siemens AG. (E.D. Va.) Represented Siemens in patent litigation involving 26 patents related to semiconductor memory technologies. Case settled on favorable terms after successful summary judgment rulings.
  • Mitek Surgical Products, Inc. v. Wright Medical Technology, Inc. (N.D. Cal.) Defended accused infringer in a patent case on ligament suture anchors used in orthopedic surgery. Case won on summary judgment.

Recent Publications and Presentations:

  • "Patent Law Update 2012," 15th Annual New England Intellectual Property Law Conference 2012, Boston, MA (June 13, 2012)
  • "Patent Law Update 2011," 14th Annual New England Intellectual Property Law Conference 2011, Boston, MA (June 16, 2011)
  • "The Development of Patent Claim Construction Theory and Practice," Law Seminars International, Seattle, WA (July 16, 2008) and Chicago, IL (Feb. 13, 2009)
  • "Proposed Patent Legislation Needs Reform of Its Own," Mass High Tech: The Journal of New England Technology (Feb. 29, 2008)
  • "Tactics for Mastering Markman Issues," Center for Advanced Legal Studies, Suffolk University Law School, Boston, MA; sponsored with the Boston Patent Law Association and Federal Circuit Bar Association (October 20, 2006)

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