Gary B. Solomon

Partner

Overview

Gary Solomon is a partner with Foley & Lardner LLP. He is a member of the firm’s Electronics Practice. Gary focuses his practice on patent preparation, prosecution and the monetization and protection of these intellectual property assets.

Gary has years of experience help developing large and strategic patent portfolios for his clients, as well as conducting IP due diligence; drafting legal opinions relating to utility and design patents, including patentability, non-infringement, freedom-to-operate, invalidity and design-around opinions; and participating in a number of IP transactions, including acquisition, funding and company sales.

Gary holds a Master of Science in Electrical Engineering and has experience in the areas of communications systems, automatic control systems, power systems, robotics, antennas, microelectronics, industrial equipment, locker systems, optics, digital signal processing (DSP), imaging systems, software, mechanical devices, medical devices, energy services equipment, leisure devices, business processes, fashion, and many other technologies.

Gary has drafted and prosecuted a wide range of strategic patent applications for high-tech and low-tech inventions. From having worked with startup companies in both technical and legal capacities for almost three decades, including 10 years as a practicing engineer and more than 21 years as a patent attorney, Gary has the experience to effectively counsel startups on how to effectively leverage IP to support business and technology execution and exit strategies.

Experience*

  • Remote sensing device manufacturer: Prepared and prosecuted patent applications for a large remote sensing device company to identify and track objects for logistics operations in retail and other environments
  • Beverage manufacturer: Managed a global patent portfolio with hundreds of patents for a large beverage manufacturer; prepared and prosecuted dozens of patents
  • Semiconductor companies: Prepared and prosecuted numerous patents on circuits, processes, and systems for large semiconductor companies
  • Marine technologies: Developed patent portfolio including all technical facets of marine vessels, including communications, system controls, vessel tracking, autonomous operations, machine learning for monitoring system operation, structural design, and so on
  • Medical device manufacturers: Developed patent portfolio for system-level patents for vacuum assisted wound therapy system; prepared and prosecuted dozens of system and dressing patents; patent preparation and prosecution for: ultrasound system; MRI system; fascia tissue treatment devices; X-ray sensors; implantable device for monitoring; surgical instruments and devices used therefor; wheelchairs; hospital beds; and scooters for handicapped users
  • Telecommunications company: Prepared hundreds of patent applications, including managing global filings, resulting in a patent portfolio with over 600 patents
  • Defense contractor: Prepared and prosecuted patent applications for a mid-size defense contractor with various defense-related technologies, both stand-alone and OEM solutions
  • New product developers: Developed U.S. and international IP strategies for various startup and mid-size product developers to protect new products using patents and safeguard other IP assets
  • Advertising company: Developed a patent portfolio for a startup in the retail advertising sector that included several advertising, marketing and product rollout business methodologies
  • Fortune 500 companies: Developed sizable patent portfolios for Fortune 500 companies to protect their innovative information technologies, including software architecture tools and methods, including Internet tools, project development software tools, energy trading index, database management tools, and many other software tools
  • Online media: Developed a patent portfolio for several digital media companies, including online spin-outs of traditional newspaper companies and new-media startups
  • Fashion company: Prepared an IP strategy that combined the use of design and utility patents, copyrights and trademarks to protect client's IP rights in shoes, purses and other fashion accessories
  • Computer printer company: In a patent infringement case against a non-practicing entity that had previously settled with another industry defendant for $400 million, developed and executed a winning defense strategy, including non-infringement positioning and invalidity searching, in the case, which involved a software registration system and process

Technical Experience

As a missile systems design and test engineer for 10 years at The Raytheon Company:

  • Researched, developed, tested and implemented a variety of hardware and software systems in the areas of missiles, robotics, signal processing, and optics
  • Developed stabilization platform for airborne laser weapon system
  • Named inventor on several U.S. patents

Business Experience

  • Founded an engineering company that consulted for several Fortune 100 companies in the development of robotic systems and military systems
  • Co-founded a semiconductor company for innovative chip-to-chip interconnect technology
  • Co-founded a publishing company that published, marketed and distributed instructional boating books and videos

* Certain of these matters were handled prior to joining Foley.

Recognition

  • Recommended, Intellectual Asset Management (IAM) magazine's Patent 1000, Texas Intellectual Property-Prosecution (2018-2019)

Presentations

  • Judge for New Venture Challenge for Student Business Plan Competition (2020)
  • Guest Lecturer, “IP 101 and IP War Stories,” University of Colorado at Boulder, College of Engineering & Applied Science, Tech Ventures & Marketing Class (2020)
  • Moderator, "Better, Faster, Cheaper Patents," IP Law & Management Institute, West Lake Village, CA (2018-2019)
  • Moderator, "Advanced Patent Portfolio Development Tactics," IP Law & Management Institute (2014-2017)
  • Speaker, "Intellectual Property Protection Workshop - Patents, Trademarks, Trade Secrets, and More: Protecting Your Assets and Increasing Company Value" and "Patent Searching and Evaluating Patent Infringement Risk," No Magic World Conference (2010-2017)
  • Speaker, "The New Patent Game and Nanotechnology," Colorado Nanotechnology Alliance (2007)
  • Speaker, "Business Methods Patents - Update to State of the Art," Dallas Bar Association (2005)

Professional Memberships

  • American Intellectual Property Legal Association
  • Dallas Bar Association
  • Boston Patent Law Association
  • TeXchange Dallas/Austin

Education

  • Suffolk University (J.D., cum laude, 1997)
  • University of Colorado at Boulder (M.S.E.E., cum laude, 1991)
  • Tufts University (B.S.E.E., cum laude, 1988)

Admissions

  • Massachusetts
  • Texas
  • U.S. District Court for the Eastern District of Texas
  • U.S. Patent and Trademark Office
  • U.S. Supreme Court

Capabilities