Robert E. Rudnick

Robert Rudnick counsels clients in a wide variety of intellectual property matters including patent procurement and portfolio development strategies, generating value from patent portfolios, patent and technology licensing, patent clearance studies, patent non-infringement/invalidity evaluations and opinions, corporate mergers and acquisitions and patent prosecution, especially in the medical device and telecommunication technologies. In addition, Mr. Rudnick has significant business and legal experience in negotiating and providing counsel with intellectual property-based transactions. He has also counseled and defended clients from other aggressive patent licensing entities such as non-practicing entities (a/k/a Patent Trolls). He spent time in various in-house roles at AT&T and subsequent spin-off companies Lucent Technologies and Avaya Inc. before joining Gibbons.

At Avaya, Mr. Rudnick handled intellectual property issues important to Avaya's domestic and multi-national technology businesses, both in the manufacturing or services business sectors. His practice directly affected governance and operation of Avaya's business and included developing intellectual property policies concerning software, patent and trademark filing, mergers and acquisitions, divestitures, investor relations, and employee hiring, resignations and dismissals. Mr. Rudnick guided the establishment of Avaya's positions governing the activities of its representatives before standards bodies, negotiated intellectual property aspects arising in domestic and international sales and services agreements, including intellectual property defense and indemnification provisions, intellectual property ownership and Open Source software. Mr. Rudnick also provided advice and counsel regarding patent and trademark procurement strategies to leverage and protect the corporation's intellectual property assets as well as defending Avaya from allegations of patent infringement.

Before joining Avaya, Mr. Rudnick was a member of Lucent Technologies' Patent Assertion Team which received favorable notoriety in the article: "Soldiers of Fortune," COM-American Lawyer's Corporate Counsel Magazine, pp. 10-18 (June 1998) for the revenues it generated based on Lucent's patent portfolio. In that role, he utilized experience in patent portfolio management, negotiation skills and knowledge of patent prosecution and domestic and foreign infringement laws to provide patent assertion and licensing support in negotiating domestic and international patent license agreements.

Prior to attending law school, Mr. Rudnick was an electrical engineer for the David Sarnoff Research Center developing hardware and software for the design and test of television components and medical and data communications equipment.

Rutgers University School of Law (J.D., 1991)
Rutgers Computer and Technology Law Journal, 1989-1991

Rutgers College of Engineering (B.S. Electrical Engineering, High Honors, 1985)
Member of Tao Beta Pi - National Engineering Honor Society
Member of Eta Kappa Nu - National Electrical Engineering Honor Society

State of New York 1992

United States District Court for the Southern District of New York 1992

United States District Court for the Eastern District of New York 1992

United States Patent and Trademark Office 1992 (Reg. No. 36,260)

2013 New Jersey Intellectual Property Law Association, Board of Directors, President

2012 New Jersey Intellectual Property Law Association, Board of Directors, President-Elect

2011 New Jersey Intellectual Property Law Association, Board of Directors, Vice President

2010 New Jersey Intellectual Property Law Association, Board of Directors, Secretary

2009 New Jersey Intellectual Property Law Association, Board of Directors, Treasurer

Member, American Intellectual Property Law Association

Member, New York Intellectual Property Law Association

"Uniloc v. Rackspace - 35 U.S.C. § 101 Lockdown in the Eastern District of Texas," IP Law Alert, April 5, 2013 (Robert E. Rudnick, William A. Hector)

"PTO Announces Software Partnership Roundtable Meetings," IP Law Alert, January 9, 2013 (Thomas J. Bean, Robert E. Rudnick)

"Apple v. Motorola - An End to the Smart Phone Wars or the Harbinger of New Standards for Proving Damages and Injunctions?," IP Law Alert, June 29, 2012 (Robert E. Rudnick, Lisa H. Wang)

"Prometheus Re-bound: Supreme Court Reverses in Mayo v. Prometheus Labs," IP Law Alert, March 20, 2012 (Robert E. Rudnick, Jillian A. Centanni)

"Gibbons Institute Webinar Discusses the Supreme Court's Bilski Decision," IP Law Alert, July 8, 2010

"Supreme Court's Bilski Decision Rejects Federal Circuit's Machine-Or-Transformation Test For Business Method Patents," IP Law Alert, June 29, 2010 (Robert E. Rudnick, Thomas J. Bean)

"Drafting and Negotiating Defense and Indemnification Provisions," American Bar Association Intellectual Property Litigation Newsletter, Spring 2010 (Robert E. Rudnick, Andrew M. Grodin)

"12-Month Extension to the Provisional Patent Application Period - Buying More Time to Commercialize Your Invention," IP Law Alert, April 22, 2010

Interviewed in "Patent Reform - Preparing for Change," GC Mid-Atlantic, April 1, 2007

Panelist, New Jersey Intellectual Property Law Association, "New Jersey Intellectual Property Law Association Young Lawyers Networking Event," Iselin, NJ. February 21, 2013

Chair and Panelist, New Jersey Intellectual Property Law Association, "Impact Drafting NPE-Savvy Defense and Indemnification Clauses in Sales/License Agreements," Islein, NJ. January 24, 2013

Panelist, 28th Annual Joint Patent Practice Seminar, "General Protecht Group, Inc. v. Leviton Mfg. Co., Inc., Tripping the Circuit on Implied Patent Licenses Created Under Settlement Agreements," April 17, 2012

Chair and Panelist, New Jersey Intellectual Property Law Association Electronics, Telecom and Software Patent Practice Update, “Impact of the New Legislation on Prosecution of Patent Applications in the Electrical Arts,” November 9, 2011

Panelist, Rutgers School of Law's Center for Law, Science and Technology and the New Jersey Intellectual Property Law Association, Fourth Annual Patent Law and Pharmaceuticals Symposium, "Transactional Issues in Intellectual Property," September 22, 2010

Panelist, Seton Hall University School of Law's Gibbons Institute of Law, Science & Technology, "Understanding the Supreme Court's Bilski Decision," July 1, 2010

Gibbons Director Robert Rudnick Elected President of the New Jersey Intellectual Property Law Association