Robert M. Asher

Robert M. Asher

Partner

t:
617-443-9292, ext 224
f:
617-443-0004
e:
rasher@sunsteinlaw.com
Harvard Law School
J.D., 1981
Massachusetts Institute of Technology
B.S., Electrical Engineering, 1978

Awards

  • 2016-top20-RMA
  • Martindale Hubbell-Preeminent-Badge

Education

  • Harvard Law School J.D., 1981
  • MIT B.S., Electrical Engineering, 1978

Honors

  • Super Lawyers List 2007–2018

Admissions

  • Registered patent attorney 30,445 United States Patent and Trademark office.
  • Bar Massachusetts and Illinois

Profile

Robert Asher leads the post-grant proceedings teams at Sunstein leveraging his deep experience in patent litigation and patent prosecution. He is an astute and accomplished advocate for inventors and businesses affected by patents. Clients have been richly rewarded from Bob’s litigation guidance, appellate advocacy and patent prosecution work. He is the chair of Sunstein’s Patent Office Litigation Group.

Experience

  • Our team won a $14.6M verdict for patent infringement of infrared thermometer patent invented by MIT alum and company founder
  • He has been sought out for his expertise in defending valuable patents challenged in inter partes review and reexamination, while the patents were being asserted in patent infringement litigation.
  • Persuaded the Federal Circuit Court of Appeals to limit reliance by the Patent Trial and Appeal Board (PTAB) on “common sense” to invalidate patents. The successful appeal is reported in the case of Arendi S.A.R.L. v. Apple.
  • Argued the In re Swanson appeal forcing the Federal Circuit Court of Appeals to address the issue of substantial new question of patentability in view of parallel litigation in the district courts.
  • Developed patent portfolios that have contributed to significant acquisitions, licenses and litigation settlements.
  • A software patent pioneer, having been one of the first to patent an expert system in the mid-1980’s.
  • Prosecuted a patent application to allowance in less than six months using an accelerated examination procedure.
  • He has made extensive use of his knowledge of patent office tactics and procedures. In one situation, by figuring out how reexamination or reissue could be used effectively to strengthen the client’s patent, Bob was able to deflate a challenge to the existing license, preserving the royalty payments to the client.
  • Defeated a patent infringement claim for a Fortune 500 client in district court and the Federal Circuit by successfully making use of the doctrine of judicial estoppel.
  • Bob has challenged patents in the United States Patent and Trademark Office by filing reexaminations or protests that successfully limited the scope of the competitor’s patents.
  • Bob has rendered opinions regarding validity or infringement and assisted with designing around patents. In one case, Bob’s opinion of invalidity was challenged in court and he was required to testify on behalf of our client. The court and jury were persuaded consistent with the logic of Bob’s opinion and testimony that the patents in question were invalid.
  • Bob has prosecuted patent applications for a wide variety of businesses and technologies including integrated circuits, data storage, interactive television, financial services, medical equipment, pharmaceuticals, food, digitizing tablets, bottling and weighing equipment, microwave antennas, caching, scanning, printing, telecommunications and bar codes.
  • Bob devotes a significant portion of his practice to intellectual property litigation matters in which he has worked on behalf of numerous companies, of national and international scope. Specific patent cases have involved technologies including automotive trim carpets, interactive cable television, power converters, solar cells, microwave antennas, consumer electronic appliances, satellite tuners, robot arms, call routing, flame detectors and ACL surgery. In other intellectual property litigation, he has addressed issues of copyright infringement, trade dress and trademark infringement.

Representative Cases

  • Exergen Corp. v. KAZ USA, Inc.
    U.S. District Court for the District of Massachusetts
  • VLT, Inc. v. Power One, Inc.
    U.S. District Court for the District of Massachusetts and Federal Circuit Court of Appeals (lead attorney)
  • Astec International v. Sharp Electronics
    U.S. District Court for the District of Colorado
  • Plasma Physics v. Sanyo Electric and Sears Roebuck
    U.S. District Court for the Northern District of Illinois
  • Gates Formed Fibre v. Delaware Valley Corp.
    U.S. District Court for the District of Massachusetts
  • Terry Scheller v. Leather Loft Store et al.
    U.S. District Court for the District of Massachusetts
  • Andrew Corp v. Gabriel Electronics, Inc.
    U.S. District Court for the District of Maine
  • Knop et al. v. Allen
    U.S. District Court for the District of Maine (interference)
  • ICTV v. Worldgate
    U.S. District Court for the Eastern District of Pennsylvania
  • 3M v. Briteline
    U.S. District Court for the District of Minnesota
  • McGuire et al. v . Acufex
    U.S. District Court for the District of Massachusetts
  • Amgen v. Hoffman La Roche
    U.S. District Court for the District of Massachusetts
  • Bowers v. Baystate Technologies
    U.S. District Court for the District of Massachusetts
  • Vornado v. Duracraft
    U.S. District Court for the District of Kansas
  • Scansoft, Inc. v. ART Advanced Recognition Technologies
    U.S. District Court for the District of Massachusetts
  • Honeywell Consumer Products, Inc. v. Windmere Corp. and White Westinghouse
    U.S. District Court for the District of Massachusetts
  • Honeywell Consumer Products, Inc. v. Windmere Corp.
    U.S. District Court for the District of Massachusetts
  • Lemelson v. United States and Cincinnati Milacron
    U.S. Court of Claims
  • Bryant v. Electronics Corporation of America
    U.S. District Court for the District of Massachusetts
  • Etonic v. Weight-Rite Golf Corp.
    U.S. District Court for the District of Massachusetts

Professional Involvement

  • Bob has been a frequent seminar panelist for the American Intellectual Property Law Association.
  • Co-chair of the Patent Sub-committee of the Intellectual Property Litigation Committee of the Litigation Section of the American Bar Association.
  • Active member of the Patent Law Committee of the American Intellectual Property Law Association.

Honors

  • Bob graduated from Massachusetts Institute of Technology with a degree in electrical engineering with honors from Tau Beta Pi and Eta Kappa Nu. He received his law degree from Harvard Law School.
  • Bob was named to the Super Lawyers® list in the practice area of intellectual property 2007-2018 in Massachusetts, a list limited to the top 5 percent of attorneys in each region. The attorneys featured in Super Lawyers were selected by their peers in an extensive nomination and polling process conducted by the research team at Super Lawyers, a service of Thomson Reuters and seen in a special advertising section in Boston magazine.

Bar and Court Admissions

  • Massachusetts
  • US Patent and Trademark Office
  • Federal Circuit Court of Appeals
  • First Circuit Court of Appeals
  • Seventh Circuit Court of Appeals
  • US Supreme Court

*The Martindale-Hubbell Peer Review Icon is a service mark of Reed Elsevier Properties Inc., used under permission from Reed Elsevier Properties Inc. in accord with the terms and conditions established by Martindale-Hubbell.

Results

FairWarning IP, LLC v. Iatric, Inc.; FairWarning IP, LLC v. CynergisTek, Inc.

We successfully defended clients Iatric and CynergisTek in the District Court and Federal Circuit against claims of patent infringement relating to software for detecting fraud and misuse of protected health information. Sunstein litigation group obtained judgments of patent invalidity under Section 101.

Exergen Corporation vs. Kaz, USA, Inc.

United States District Court for the District of Massachusetts

Sunstein’s trial team won a jury verdict for our client Exergen, resulting in a $16 million judgment against Kaz, the maker of consumer products sold under the Vicks and Braun brands. Despite Kaz’s multiple challenges to the twelve patent claims asserted by Exergen, the jury upheld the validity of all of them, and found that the forehead thermometers sold by Kaz infringed those claims. Exergen is a Watertown, MA-based manufacturer and seller of thermometers for both the professional and consumer markets.

#

$16 million judgment

Publications

Section 101 Gains a Toehold in IPRs

Section 101 Gains a Toehold in IPRs

PTAB Proceedings Becoming More Indefinite

PTAB Proceedings Becoming More Indefinite

The Supreme Court Changes the Rules for IPRs: The Implications for Partial Denials, Indefinite Claims and Redundant Grounds

The Supreme Court Changes the Rules for IPRs: The Implications for Partial Denials, Indefinite Claims and Redundant Grounds

Justice Delayed? Here’s Why Inter Partes Reexamination has been Replaced by Inter Partes Review

Justice Delayed? Here’s Why Inter Partes Reexamination has been Replaced by Inter Partes Review

Disclaimer Tactic Averts Facebook’s Patent Challenge

Disclaimer Tactic Averts Facebook’s Patent Challenge

Smoothing the Way for Appellate Success in the PTAB

Smoothing the Way for Appellate Success in the PTAB

Federal Circuit Delivers Billion-Dollar Lesson on Written Description

Federal Circuit Delivers Billion-Dollar Lesson on Written Description

Supreme Court Reduces Risk to Patent Owners Who Are Slow to Bring a Patent Infringement Lawsuit

Supreme Court Reduces Risk to Patent Owners Who Are Slow to Bring a Patent Infringement Lawsuit

Patent Owners Beware: Preliminary Response in Inter Partes Review Takes On New Significance

Patent Owners Beware: Preliminary Response in Inter Partes Review Takes On New Significance

Inter Partes Review – Heads I Win, Tails You Lose

Inter Partes Review – Heads I Win, Tails You Lose

How Broadly Should Patent Claims Be Construed in Inter Partes Reviews? The Federal Circuit Enters the Debate

How Broadly Should Patent Claims Be Construed in Inter Partes Reviews? The Federal Circuit Enters the Debate

Patent Owners Gain Revitalized Right of Enforcement Against Equivalents

Patent Owners Gain Revitalized Right of Enforcement Against Equivalents

Discomfort Grows as Patent Reexamination Once Again Trumps Court Decision

Discomfort Grows as Patent Reexamination Once Again Trumps Court Decision

Claim Construction on the Verge of Transformation: The Disruptive Promise of Inter Partes Review

Claim Construction on the Verge of Transformation: The Disruptive Promise of Inter Partes Review

Inter Partes Review: The New Markman Hearing?

Federal Circuit Moves Claim Construction One Step Closer to Uniformity

Federal Circuit Moves Claim Construction One Step Closer to Uniformity

Focusing on Inter Partes Reexamination

Focusing on Inter Partes Reexamination

Injunctive Relief after eBay v. MercExchange

Post Issuance Strategies for Patentee and Third Parties

Post Issuance Strategies for Patentee and Third Parties

Sophisticated Use of Reexamination and Reissue

Sophisticated Use of Reexamination and Reissue

Harmonizing Standards for District Court and PTAB Claim Construction

Reexamination: The Tail that Wags the Dog

Reexamination: The Tail that Wags the Dog

Add Inter Partes Re-Examination to Your Patent Infringement Defense

Add Inter Partes Re-Examination to Your Patent Infringement Defense

Reexamining Patent Litigation

Reexamining Patent Litigation

Winning at Patents Without Full-Blown Litigation

Winning at Patents Without Full-Blown Litigation

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