Overview
Rafael Perez-Piñeiro
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Practice Focus

Experience

Rafael is a member in our Intellectual Property department. Based in Miami, Rafael previously was a partner with a boutique firm that specializes in intellectual property law. He began his legal career as a patent agent at Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, and as an intellectual property attorney at Blank Rome LLP, Stroock & Stroock & Lavan LLP, and IBM Corporation. Other prior affiliations include serving as an electronics engineer at the National Security Agency and as a patent examiner at the U.S. Patent and Trademark Office.

Rafael has extensive litigation experience in all areas of intellectual property, including those involving patents, copyrights, trademarks, and trade secrets. He also has significant experience with patent post grant proceedings before the Patent Trial and Appeal Board.

Rafael advises clients on a variety of intellectual property and technology matters, such as software license agreements, service level agreements, confidentiality agreements, intellectual property licensing, remediation plans, technology standards, federal government grants, and open source software investigations and clearances. In addition, he has conducted due diligence investigations in connection with mergers and acquisitions.

As a registered patent attorney, Rafael procures patents for software, computer hardware, semiconductors, radio-frequency and logic circuits, and mechanical and biomedical devices. In addition, he handles trademark matters, including trademark prosecution and the handling of opposition and cancellation proceedings.

Rafael earned a J.D. from the George Washington University Law School, an M.S. in electrical engineering from Johns Hopkins University, and a B.S. in electrical engineering, magna cum laude, from the University of Puerto Rico.

Representative Cases/Matters

  • E-Loan, Inc. v. IMX, Inc., CBM2015-00012 (Patent Trial and Appeal Board 2015)
    Lead Trial Counsel for Petitioner E-Loan, Inc. in a Covered Business Method proceeding.  Obtained cancellation of all claims asserted in litigation against E-Loan, Inc., resulting in dismissal of the pending lawsuit.
  • Sensus USA, Inc. v. Certified Measurement, LLC, IPR2015-01454 (Patent Trial and Appeal Board 2015)
    Lead Trial Counsel for Petitioner Sensus USA, Inc. in an Inter Partes Review proceeding.  The Board granted petition for review of all claims for which review was requested, resulting in settlement of the pending lawsuit between the parties.
  • Rain Gutter Pros LLC v. MGP Manufacturing LLC, Case No. 2:14-cv-00458 (W.D. Wash. 2014)
    Presented claim construction arguments (first chair) on behalf of patentee which were fully adopted by the Court, resulting in a favorable settlement for client.
  • E-Loan, Inc. v. Elon Property Management Company, L.L.C., Case No. 91209301 (Trademark Trial and Appeal Board 2013)
    Lead Counsel for E-Loan, Inc. in opposition proceeding that led to co-existence agreement and settlement of the proceeding.
  • Automated Tracking Solutions, LLC v. Awarepoint Corporation, Case No. 2:11-cv-00424 (E.D. Va. 2012)
    Represented defendant, Awarepoint Corporation, in a patent infringement suit. Obtained stay and dismissal of the case.
  • SIPCO, LLC v. Coulomb Technologies, et al., Case No. 6:11-cv-00048 (E.D. Tex. 2012)
    Represented defendant, Coulomb Technologies, in a patent infringement suit involving wireless mesh networks. Obtained favorable Markman ruling which was followed by negotiation of settlement agreement on behalf of the client.
  • Freshloc Technologies, Inc. v. Awarepoint Corporation, Case No. 3:10-cv-01532 (N.D. Va. 2010)
    Represented defendant, Awarepoint Corporation, in a patent infringement suit. Obtained grant of patent re-examination, cancellation of all asserted claims, and stay, which resulted in ultimate dismissal of the case.
  • IMX, Inc. v. E-Loan, Inc., Case No. 09-cv-20965 (S.D. Fla. 2010)
    Represented defendant, E-Loan, Inc., in a patent infringement suit. Obtained a stay for the case and dismissal.
  • Exigent Technology v. Radiant Telecom, Inc. et al., Case No. 1:04-cv-22140 (S.D. Fla. 2007)
    Represented defendant, Radiant Telecom, Inc., in a patent infringement suit. Obtained favorable Markman ruling and won motion to stay which resulted in a dismissal of the case.
  • X-Cyte v. Amtech Systems Corp., Case No. 3:01-cv-01159 (N.D. Cal. 2001)
    Represented defendant, Amtech Systems Corporation, in a patent infringement suit. Obtained favorable Markman ruling which resulted in a dismissal of the case.
  • Represented IBM in divestiture of its personal computer business to Lenovo and in divestiture of its printer business to Ricoh.
  • Represented FPL FiberNet in acquisition of optical fiber technology assets from Grande Communications Networks, LLC.
Credentials

Admissions - Court

  • U.S. District Court for the Southern District of Florida
  • Florida Supreme Court
  • U.S. Patent and Trademark Office

Admissions - State

  • Florida
  • District of Columbia

Education

  • George Washington University School of Law
  • University of Puerto Rico
  • Johns Hopkins University

Honors and Awards

  • Named an IP star for the State of Florida, 2013 - 2016
  • 40 under 40 Award for Outstanding Lawyers of Miami-Dade County, sponsored by the Cystic Fibrosis Foundation, 2011
  • IBM Client Service Award for due diligence work in proposed acquisition of private company, 2008
  • IBM Bravo Award for work performed as part of divestiture of IBM’s personal computer business to Lenovo, 2005
  • IBM Bravo Award for meeting patent filing goals, 2003

Professional Membership

  • Hispanic National Bar Association, Member
  • Indigenous Rights Group, INTA, Member
  • Abacode, Member, Board of Advisors
Insights

External Publications

  • “Invention Date Still Important For Patent Applications,” The Daily Business Review, April 2010
Events
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