Robert D. McCutcheon

Robert (Rob) D. McCutcheon is a member of the executive committee and a partner in the intellectual property group. He has more than 30 years of experience in domestic and foreign IP procurement, exploitation, enforcement, and counseling in patents, trademarks, copyrights, and trade secrets. His 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 IP. He also has extensive experience with 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 MWM, Rob was IP counsel for STMicroelectronics (f/k/a SGS-Thomson Microelectronics), an international semiconductor company. Prior to his legal career, Rob worked as an electronic/systems engineer with McDonnell Douglas in St. Louis.

Representative Matters

• 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.

Education

Honors & Awards

Texas Super Lawyers, Thomson Reuters
2004-2005, 2008-2022

The Best Lawyers in Dallas, D Magazine
2020

Bar Admissions

Missouri, 1993

Texas, 1994

U.S. Patent and Trademark Office

U.S. District Court, Eastern District of Texas

U.S. District Court, Northern District of Texas

U.S. Court of Appeals, Federal Circuit

U.S. Court of Appeals for the 11^th Circuit