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Education
Honors
Awards & Honors
Recognized for his outstanding intellectual property legal work in the 2013, 2014 and 2015 Managing Intellectual Property Magazine "IP Stars" Guides.
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Professional Profile
Robert J. Roby is a partner in our Orange County office. With a degree and experience in mechanical engineering, he focuses on client practice and represents clients in diverse technology areas and in various stages, from start-up companies to well-established multi-national companies. Mr. Roby’s medical device experience includes advising early-stage companies, such as Spiration, Inc. (acquired by Olympus Medical Systems Corporation) and EndiCOR Medical, Inc. (acquired by ev3 Inc.), as well as more established companies, such as Pro-Dex, Inc., and multi-national corporations, including Fisher & Paykel Healthcare Limited. He also has an extensive background in automotive and power sport technologies and has represented original equipment manufacturers as well as aftermarket and component level manufacturing entities.
Mr. Roby frequently advises clients regarding offensive and defensive competitive strategies, prelitigation strategies, infringement studies, invalidity and noninfringement opinions, strategic transactions and complex patent prosecution. He assists clients with implementing programs to identify, evaluate and protect all forms of intellectual property. Mr. Roby frequently prepares agreements on behalf of clients and advises clients regarding contractual obligations.
Throughout law school, Mr. Roby clerked for a New York City patent law firm. He was a summer associate with Knobbe Martens in 1996, joined the firm in 1997 and became a partner in 2003.
Additional Information
Current and Former Representative Clients
- Competition Systems Inc. (acquired by MSD Ignition)
- Retrotek Speed (acquired by Wald Diversified)
- Yamaha Motor Corporation
- Ohlins Racing AB; Bazzaz
- HPI Racing; Esco Industries, Inc.
- TFP, Inc.
- Manhattan Design Studio (acquired by Aspex Eyewear)
- Star Trac Fitness
- DCS Appliances (acquired by Fisher & Paykel Appliances)
- Fisher & Paykel Appliances
- Spiration, Inc. (acquired by Olympus Corporation of the Americas)
- Survivair (acquired by Bacou-Dalloz/Sperian Protection)
- Sperian Protection; TOLCO (acquired by NIBCO)
- NIBCO
- The Knox Company
- BioDot, Inc.
- Pro-Dex
- AdamsRite Aerospace (acquired by Transdigm)
- Ultimate Support Systems
- Zephyr Manufacturing Co., Inc.
- Anderson Bat Company
Specializing In
Cases, Articles, Speeches & Seminars
Cases
VP Intellectual Properties, LLC v. Nobel Biocare USA, Inc. et al., SA-99-CV-3136-JLL (D.N.J.). Defended Nobel Biocare in action for patent infringement relating to dental implants and abutments. Case resolved by settlement.
Ex Parte Reexamination of U.S. Patent No. 6,745,873. Represented third party requester. All claims canceled as a result of the reexamination.
Ex Parte Reexamination of U.S. Patent No. 5,689,094. Represented patentee. Claim 1 amended to correct typographical error in claim. Claims 2-13 confirmed patentable. Claims 15-25 added and confirmed patentable.
Representative Patents and Published Applications
U.S. Application Publication No. 2009-0292262A1 entitled Valve Loader Method, System and Apparatus, Spiration, Inc.
U.S. Application Publication No. 2008-0257928A1 entitled Backpack for Self Contained Breathing Apparatus, Sperian Protection Americas
U.S. Patent No. 8,596,668 entitled Rotationally Adjustable Adapter for Sport Boot Binding
U.S. Patent No. 7,735,475 entitled Fuel Injection Body Sized to Replace Carburetor Body, Retrotek Speed/Wald Diversified
U.S. Patent No. 7,544,152 entitled Linkage Based Exercise Machine, Star Trac Fitness
U.S. Patent No. 7,476,101 entitled Dental Handpiece with Removable Apex Finding Electrode, Pro-Dex, Inc.
Articles
Sonos Forward-Publishes Patents: Strategic Upside, Limited Downside, JD Supra Perspectives, March 2014.
Co-author, Protect Your Business by Protecting Your Intellectual Property, SEMA News, January 2010, at 110.
Knock-Offs, Counterfeits and Copies – What’s the Difference, IP Perspectives, Summer 2006
4 Tips for Dealing with Counterfeiters, IP Perspectives, Summer 2006
Counterfeits & Copies, Part 2 – The Legal Route, Modified Magazine, February 2006, at 86.
Speeches & Seminars
The Latest Tools, Tips and Tricks to Counter Counterfeits and Knock-Offs, Panelist at 2012 SEMA Show, Las Vegas, Nevada (October 31, 2012).
How to Manage the Costs of Protecting Your Intellectual Property, Remarks at 2010 SEMA Show, Las Vegas, Nevada (November 4, 2010).
Do-It-Yourself Intellectual Property Protection, Address at 2009 SEMA Show Education Days, Las Vegas, Nevada (November 2, 2009).
Patent, Trademarks, and Copyrights: Ask the Experts, Remarks at 2009 SEMA Show Education Days, Las Vegas, Nevada (November 2, 2009).
Patent, Trademarks, and Copyrights: Ask the Experts, Remarks at 2009 SEMA Webinar (October 22, 2009).
Safeguard Your Company Against Illegal Knockoffs and Counterfeits, Remarks at 2008 SEMA Show Education Days, Las Vegas, Nevada (November 3, 2008).
Bang for the Buck: Extracting Maximum Value from Intellectual Property in an Economic Crisis, Address to Southern California Chapter of Association of Corporate Counsel, Irvine, California and Torrance, California (April 15, 2009).
Developing Strategies to Protect Your Intellectual Property, Remarks at SEMA Webinar (April 17, 2008).
Reissue and Reexamination: Post-Issuance Strategies, Address, Irvine, California (March 15, 2007).
Automotive Aftermarket Seminar, Place Roadblocks and Speedbumps in the Paths of Potential Counterfeiters and Copyists, Pomona, California (September 29, 2006)
Professional Memberships
American Bar Association
American Society of Mechanical Engineers
Society of Automotive Engineers
Licensing Executives Society (Past Orange County Chair)
Ohio University Alumni Association, Greater Los Angeles Chapter Network, Orange County Regional Chair