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Miami Patent Attorney - Robert ThornburgPractice Areas:

  • Intellectual Property Litigation, Enforcement, and Defence
  • Patent Acquisition, Prosecution, Counselling and Portfolio Management
  • Trademark Acquisition, Prosecution, Counselling and Portfolio Management
  • Intellectual Property Transactions, Licensing, and Negotiations
  • Technology Outside Counsel, Corporate Matters
  • Complex Commercial and Technology Related Litigation
  • Technology Start Up Services (Formation, Employment Agreements)

Education:

2004:  L.L.M. in Intellectual Property Law, The John Marshall Law School, with honours

2002:  J.D., University of Florida Levin College of Law, with honours, The Order of Barristers, Certificate Degree in Intellectual Property

1999:  B. S. Chemical Engineering, University of Notre Dame, cum laude.

Admitted:

2003: Florida
2003: Illinois
2006: United States Patent & Trademark Office
United States District Courts: Southern, Middle and Northern
District of Florida; Northern District of Illinois
United States Courts of Appeals: Federal, Seventh & Eleventh Circuit

Overview:  Mr. Thornburg is a Registered Patent Attorney with extensive experience in the areas of patent, trademark, trade dress, trade secret, and unfair competition related litigation, enforcement and defense. Robert manages the Miami office of Allen Dyer Doppelt Milbrath & Gilchrist P.A., Florida’s largest intellectual property law firm having six strategic offices throughout the State.

Robert’s law office provides the best of both worlds, the strength and experience of a large multi-faceted intellectual property law firm, with the hands on attention, cost-effectiveness and personalized touch of a smaller law practice.

Miami Trademark AttorneyIntellectual Property Transactions Experience: Mr. Thornburg represents an impressive roster of Florida and South American clients in the areas of patent and trademark prosecution, domain name disputes, and electronic discovery counseling. His experience in patent prosecution includes CPAP respiratory interfaces, high efficiency cogeneration HVAC systems, medical devices, consumer products, security systems, mechanical devices, process systems, telecommunications systems, pharmaceuticals and “green” technologies.

Robert is one of the very few attorneys in Florida that has experience in drafting over 100 patent applications, over 200 trademark filings, and litigated over 100 complex intellectual property disputes.

Intellectual Property Litigation Experience: Recent examples of Robert’s intellectual property litigation experience includes:

November 2012: Settlement agreement on behalf of a Miami based insurance company which included a covenant not to sue and general release, after filing a declaratory action sounding in non-infringement after that company received a cease and desist letter from a New England based editorial agency.

October 2012: Successful defense of a publicly traded Miami nutraceutical company sued for trademark infringement by a Colorado competitor which resulted in a covenant not to sue and agreement to drop a related opposition proceeding in the U.S. Trademark Office.

September 2012: Successful domain name transfer of five infringing domains through the ICANN protocol on behalf of an Idaho based clandestine drug laboratory remediation service network.

July 2012: A finding of no damages, no infringement, and no injunction after a three week jury trial in Miami Federal Court on behalf a Sao Paulo, Brazil based energy drink manufacturer against a large San Diego based trademark holding and licensing group.

May 2012: Favorable defense and later settlement on behalf of a large Delray Beach based addiction recovery and rehabilitation center accused of cybersquatting.

March 2012: Served as a consulting expert in a month long trademark litigation trial on behalf of well known Manhattan and South Beach located Chinese restaurant – helping to secure a jury verdict of non-infringement regarding the registered trademarks or a rival restaurant.

August 2011: Negotiation of an agreed-to final order & settlement (which included a covenant not to sue) on behalf of a Venezuelan based car rental company who had filed a declaratory suit seeking a finding of non-infringement regarding a national U.S. based competitor.

June 2011: Entry of a final judgment in the Southern District of Florida which included a permanent injunction baring use of a South Florida based triathlon training and retail fitness company’s trademarks.

November 2010: Successful denial of a motion to dismiss a complaint for trademark and copyright infringement based upon a well-known Los Angeles based children’s reading DVD training program.

October 2008: Order (after oral arguments) agreeing to transfer of a patent infringement suit from the Eastern District of New York to the Southern District of Florida on behalf of Ft Lauderdale base tool manufacturer.

September 2007: Denial of a motion to transfer and/or dismiss a patent infringement suit from the Southern District of Florida to the District of Nebraska.

Spring 2007 : Successful settlement of the first ever enforcement lawsuit regarding an estate planning patent which relates to transfer non-qualified stock options through grantor retained annuity trusts (GRATs).

Real World Technical Experience: Prior to attending law school, Robert received valuable engineering experience as an associate engineer with NASA’s Space Life Science Division at the Kennedy Space Center where he developed advanced filtration systems to be used on the International Space Station and in flight tests in the Space Shuttle prior to attending law school. Thus, Robert has experience not only as a patent attorney, but also hands on practical experience as an engineer and researcher.

Leadership in the Florida Bar: Robert has served in numerous leadership positions with the Florida Bar Business Law Section over the past seven years. He is the past Chair of the Intellectual Property Committee, as well as the past Chair of the Computer Law Committee. Robert has also been active with the Business Law Section’s legislative efforts with the Florida State Legislature. He has served on the Florida Supreme Court Trial Technology Committee, and the Florida Bar Civil Rules Subcommittee on E-Discovery. He is the Past-President of the Intellectual Property Law Association of Florida.

Mr. Thornburg is the co-founder and current co-chair of the Copyright Society of the USA’s Miami Chapter.

Miami Patent AttorneyRole in South Florida’s Business Community: In addition to his service with the Florida Bar, Mr. Thornburg is very involved in the South Florida business and creative communities. He is a past trustee of the Greater Miami Chamber of Commerce, where he served on the Technology & Bioscience Committee.

Robert also participates in BioFlorida’s Southeast chapter activities to advance the field of biotechnology and life sciences in South Florida.

Mr. Thornburg serves as President Elect of the University of Florida Law Alumni Council.

Service as an Expert Witness: Robert has also been tapped as a testifying expert in complex patent infringement disputes – including in the recent West Palm Beach case Nature’s Earth v. Planetwise in the Southern District of Florida.

He has also served as a consulting expert in multiple trademark infringement lawsuits, including the use and role of objective evidence as to the issues of secondary meaning and likelihood of consumer confusion. This includes Robert’s role as a rebuttal trademark expert as to the development and use of trademark survey experts.

Speaking Experience: Mr. Thornburg is an active lecturer on topics relating to intellectual property and electronic discovery and has served as a visiting lecturer at the University of Florida College of Law, Florida State University College of Law, and the University of Notre Dame College of Engineering. He also has participated in various panels, including Thomson LegalWorks’ 2006 A-Z Electronic Discovery in Miami. While in law school, he served as Vice-Chair of the Moot Court Board, Editor-in-Chief of the Journal of Technology Law & Policy, and President of the Florida Intellectual Property Law Association.

Recognition:
South Florida Legal Guide, Up and Comer, Intellectual Property Law (2013-2016)
Best Lawyers in America (2013-2017)
Florida Super Lawyers (2009 – 2016)
The Daily Business Review, Rising Stars (2013)
Florida Trend Legal Elite, Up and Comers (2010 & 2012)
40 Under 40 Outstanding Attorneys of Miami-Dade County, 2009

Publications: Mr. Thornburg has authored the following publications:
Electronic Discovery in Florida, The Florida Bar Journal, Vol. 80, No. 9 (October 2006)

Trade Secrets in the Digital Age, ABA SciTech Law Journal, Vol. 3, Issue 1 (May 2006)

Trademark Survey Evidence: Review of Current Trends in the Ninth Circuit, 21 Santa Clara Comp. & High Tech. L. J. 715 (2005)

Choice of Law in International Copyright: The Split of Authority Between the Second and Ninth Circuits Regarding Extraterritorial Application of the Copyright Act, 10 J. Tech. L. &Pol’y 23 (2005)

L.L.M. Dissertation, Trademark Surveys: Development of Computer Based Survey Methods, 3 J. Marshall Rev. Intellectual P. L. (2004)

Stadium Naming Rights: An Assessment of the Contract and Trademark Issues Inherent to Both Professional and Collegiate Stadiums, 2 VA. Sports &Ent. L.J. 328 (2003)

Florida Privacy Law: Application of Intentional Tort Principles and Florida’s Right to Privacy as Safeguards to Private Dissemination of Private Information, 4 Fla. Coastal L.J. 139 (2003)

The Impact of Copyright Law on Distance Education Programs: How Fair Use and the CONFU Guidelines May Shape the Future of Academia, 27 S. Ill U.L.J. 321 (2003)