Overview

Paul Hunter is an intellectual property lawyer and the managing partner for the San Diego office of Foley & Lardner LLP. He also chairs the firm's Electronics Practice.

Paul’s experience covers a wide-range of legal and business issues relating to electronics, computer hardware and software, artificial intelligence, machine learning, semiconductor, memory, and other such fields.

Paul’s primary focus is to assist companies in maximizing the value of their technology. He has created and maintained valuable patent programs at several dozens of large and small companies. He is particularly experienced at navigating the challenges in patenting software.

Paul also represents both patent owners and patent challengers in post-grant Patent Office procedures, such as inter partes review (IPR).

In addition to his patent work, Paul assists companies in negotiations and agreements related to licenses, joint ventures, and other business arrangements involving technology.

Representative Matters

  • Assisted SolidFire in establishing and improving a patent strategy.
  • Developed patent program for U.S. Bank. Foley attorneys have handled a series of matters concerning U.S. Bank patent procurement and patent litigation, including establishing their patent program. The financial services industry has been utilizing a broad range of technology advances to differentiate services. U.S. Bank's IP program has helped protect the many innovations it is developing in computer software, financial services, credit card processing, and other financial systems. The financial services industry has also been beset by a significant number of patent litigation cases and, as a result, we have defended U.S. Bank in these cases.
  • Helped U.S. Bank avoid paying unnecessary patent license fees.
  • Reviewed multiple patents, claims, and prosecution histories and conducted prior art search regarding invalidity opinion. Drafted invalidity opinion.
  • Performed IP due diligence in multimillion dollar acquisition of client EMSystems.
  • Created a patent portfolio including more than seven accelerated patents for On-Ramp Technologies Inc.

Education

  • University of Michigan Law School, (J.D., 1998)
    • Executive editor, Michigan Telecommunications and Technology Law Review
  • Brigham Young University, (B.S., 1995)
    • Graduated with honors

Professional Memberships

  • Member, American Intellectual Property Lawyers Association (AIPLA)
  • Chair, Licensing and Management of IP Assets Committee (AIPLA)

Recognition

  • Recognized, Legal 500
  • Recognized, Super Lawyers - Rising Stars®
  • Recognized, Best Lawyers in America©
  • Recipient, Foley's Carl Hitchner Mentor of the Year Award

Admissions

  • Admitted to practice in California
  • Admitted to practice in Wisconsin
  • Admitted to practice before the U.S. Patent and Trademark Office

Languages

  • Conversant in Spanish

Publications and Presentations

Paul lectures to universities, law schools, conferences, professional organizations and corporations. His publications and presentations include:

  • "Artificial Intelligence – Who Are the Leaders,” LinkedIn Pulse, July 2016
  • “Self-Driving Cars – IP Driving Acquisition,” Dashboard Insights, August 2015
  • “Unicorns: the next troll bait?” Intellectual Property Magazine, July/August 2015
  • America Invents Act: Law & Analysis, co-author, Aspatore Books, January 2012
  • "How US Patent Reform Will Affect Your Filing," Managing IP Webinar, November 2011
  • "How to Litigate Under the New U.S. Patent Law," Managing Intellectual Property, October 2011
  • "Last Chance to Expand Patent Coverage?" IP Law 360, June 2007
  • "Peer-Reviewed Patent Applications: A Quixotic Undertaking," The National Law Journal, March 2007
  • "Patent Troll Ahead," Waters Magazine, October 2006
  • "Overcoming Patent Infringement Allegations," Aspatore Books, 2004, ISBN 1-59622-028-7
  • "Dealing with Allegations of Patent Infringement," Venture Capital Journal, September 2004
  • "Seven Habits of Successful Patenting" presented at "Patenting Business Methods in the Financial Industry" conference in 2004
  • "The Amazon Ruling," in The National Law Journal, p. B, March 2001 (Article on the effects of Federal Circuit decision in the Amazon.com "One-Click" patent case)