Overview

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

Paul’s experience includes legal and business issues relating to electronics, computer hardware and software, artificial intelligence (AI), machine learning (ML), semiconductor, memory and other such fields. His work in AI and ML helps companies identify and protect technologies through both patents and trade secrets.

Paul primarily focuses on helping companies maximize 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.

Additionally, Paul is a Certified Patent Valuation Analyst (CPVA), having attained a high degree of proficiency in the process of valuing patents and emerging technologies. Through this unique designation, he is trained to value patents and patent portfolios for mergers, acquisitions, joint ventures, bankruptcies, license negotiations, litigation damages, dispute resolution, fundraising, strategic decision making, accounting and tax purposes.

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

  • Provided strategic guidance in establishing and improving patent strategy at large technology companies such as, AVX, Nutanix, Netscout, SanDisk, TSMC, Western Digital and many others
  • Created patent programs at innovative start-up companies, including Caremeda, Continuus Materials, EPC Power, Pantheon.io, Shield AI, Totum Labs and many others
  • Developed patent programs for numerous financial services companies such as Barclays, Charles Schwab and U.S. Bank
  • Reviewed multiple patents, claims and prosecution histories and conducted prior art searches for invalidity and non-infringement opinions
  • Performed IP due diligence in multimillion dollar acquisitions

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)
  • Co-author, "America Invents Act: Law & Analysis," 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)

Education

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

Professional Memberships

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

Recognition

  • Recognized, Legal 500
  • Selected to the Super Lawyers - Rising Stars® list
  • Selected by his peers for inclusion in The Best Lawyers in America© in the field of Patent Law (2011 - 2022)
  • Recipient, Foley's Carl Hitchner Mentor of the Year Award

Admissions

  • California
  • Wisconsin
  • Texas
  • U.S. Patent and Trademark Office

Languages

  • Spanish