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Robert Johnston

Founding Member

Robert Johnston develops intellectual property strategies for clients.  He prepares and prosecutes patent applications for a range of technologies, including significant experience with medical devices, oil and gas equipment, and other devices.  His experience in the medical devices area encompasses surgical implants and implements, bandages, wound care devices, therapy devices, blood filters, drapes and face masks.   His other experience includes experience with oil and gas equipment and processes, railroad technology, semiconductors, semiconductor manufacturing equipment, solar panels, aircraft equipment, turbines, and software, among others.

In addition to protecting inventions, Mr. Johnston advises clients on avoiding patent infringement disputes and on managing these and other IP disputes when they arise.

He has assisted with every aspect of intellectual property disputes, from initial threat letters all the way to appeals to the Federal Circuit. He also helps clients clear, obtain and protect trademarks and develop trade secret programs.

Another key area of Mr. Johnston’s practice is strategic IP asset management, in which he develops strategies for monetizing intellectual property through commercialization, transactions, technology transfer and licensing. A broad technology background allows him to negotiate and draft licenses in a broad range of technology areas. He also manages intellectual property due diligence investigations for buyers and sellers of technology.

Prior to founding the Firm, Mr. Johnston practiced in some of the world’s largest world-class law firms and served as in-house patent counsel for a technology start-up.

Education
  • Southern Methodist University – J.D., 1992 | SMU Law Review Association | Thompson Scholar
  • Southern Methodist University – M.B.A., 1997
  • Southern Methodist University – M.T.S., 2004
  • Baylor University – B.S. in Engineering, 1989
Bar Admissions
  • U.S. Patent and Trademark Office
  • Texas
  • Oklahoma
Court Admissions
  • U.S. District Court for the Northern District of Texas
  • U.S. District Court for the Eastern District of Texas
  • Court of Appeals for the Federal Circuit
Representative Matters
  • Assisted a technology start-up company develop its intellectual property portfolio as an aspect of preparing to go public, eventually realizing a billion dollar capitalization.
  • Ÿ  Assisted a large medical-device company to double the size of its substantial patent portfolio with a focus on strategic areas.
  • Ÿ  Negotiated and drafted license agreements between major oil companies and a technology start-up company.
  • Ÿ  Conducted intellectual property due diligence to support the sale of a technology-intensive company to a large conglomerate.
  • Ÿ  Performed a freedom-to-operate patent study on a new medical device in advance of its introduction into the marketplace.
  • Ÿ  Litigated a patent in a two-week jury trial that resulted in a favorable verdict.
  • Ÿ  Conducted a patent reexamination at the United States Patent Office on a medical device that resulted in affirmed claims.
  • Ÿ  Investigated and analyzed a manufacturing machine for infringement under a patent and presented the results as part of a licensing campaign.
  • Ÿ  Drafted a joint development agreement between two technology companies to develop and market a new product.
  • Ÿ  Cleared a new product’s trademarks and helped secure trademark registrations for each.