Robert D. McCutcheon
- IP Audits and Legal Opinions
- IP Due Diligence
- IP Portfolio Management and Counseling
- Intellectual Property Litigation
- Inter Partes Reviews
- Media and First Amendment Litigation
- Mergers and Acquisitions
- Technology Transactions
- Trade Secrets, Restrictive Covenants and Unfair Competition
- Trademarks, Trade Dress and Domain Names
- Venture Capital and Private Equity
Robert (Rob) D. McCutcheon is a member of the Munck Wilson Mandala executive committee and a partner in the technology/intellectual property law group. He has over 25 years experience in domestic and foreign intellectual property procurement, exploitation, enforcement, and counseling in patents, trademarks, copyrights, and trade secrets. His vast technical expertise covers semiconductors, telecommunications, hand-held devices, hardware, software, medical devices, fiber optics, as well as the electro-mechanical and mechanical arts.
Rob has a broad range of legal experience in patent matters, including domestic and international patent preparation and prosecution, patent infringement and litigation matters (enforcement and defense), patent reexamination proceedings, opinions, licensing, and various matters related to mergers and acquisitions involving intellectual property. He also has extensive experience with a multitude of trademark matters including procurement of domestic and foreign trademarks and registrations, inter partes proceedings before the Trademark Trial and Appeal Board, trademark infringement and litigation matters, and client counseling.
Prior to joining Munck Wilson Mandala in 2002, Rob was IP counsel for STMicroelectronics (f/k/a SGS-Thomson Microelectronics), an international semiconductor company. Throughout his legal career, Rob has worked at other Texas law firms, including a prominent intellectual property boutique. Prior to his legal career, Rob worked as an electronic/systems engineer with McDonnell Douglas in St. Louis. In 2004, he was listed as both a Texas Rising Star and a Texas Super Lawyer by Thomson Reuters, and he has been selected annually as a Texas Super Lawyer by his peers from 2008 – 2017.
- Defending handset manufacturers in several patent infringement actions in the Eastern District of Texas.
- Rendered legal opinions of non-infringement and invalidity for patents-in-suit asserted against a medical device manufacturer.
- Defended fiber optics connector manufacturer in patent infringement action; successfully sought and obtained a USPTO order for reexamination of all claims in the patent-in-suit resulting in amended reexamination claims foreclosing plaintiff’s multi-million dollar damages claim; and obtained a jury verdict on non-infringement.
- Representing a plaintiff semiconductor company in action for patent infringement, misappropriations of trade secrets and breach of confidentiality claims against a large semiconductor manufacturer.
- Defended manufacturer of vinyl and composite sheet piling for seawall and bulkhead retaining systems in patent infringement action; successfully sought and obtained a USPTO order for reexamination of all claims in a patent-in-suit and a stay of the action pending reexamination and resulting in amended reexamination claims foreclosing plaintiff’s multi-million dollar damages claim.
- Responsible for domestic and foreign patent procurement for major telecommunications equipment manufacturer, and major semiconductor manufacturer.
- Responsible for procurement and enforcement of worldwide trademark portfolio for US-based children’s toy and furniture manufacturer.