Robert A. McFarlane
Rob is a registered patent attorney who chairs the firm’s Technology practice and co-chairs its Intellectual Property practice. His litigation practice focuses on patent infringement and licensing disputes, trade secret misappropriation, technology-related commercial matters, and software performance disputes. He also counsels clients on a wide range of intellectual property matters relating to licensing negotiations, trademark and copyright, unfair competition, and trade secrets.
He has argued cases before the Federal Circuit and the California Courts of Appeals, and represents clients in courts throughout the United States, including leading patent litigation venues in the Eastern and Western Districts of Texas, the Eastern District of Virginia, the Northern District of Illinois, the District of Delaware, and the Northern and Central Districts of California. He has been retained as an expert witness in U.S. patent law in a matter pending before the High Court of England and Wales, and is experienced in private arbitrations, inter partes review before the Patent Trial and Appeal Board (PTAB), and infringement matters in the International Trade Commission (ITC).
Rob is a recognized thought leader in intellectual property law and is past-president of the San Francisco Intellectual Property Law Association. He teaches patent law as an adjunct professor at the University of California College of the Law San Francisco (formerly Hastings College of the Law) and has taught patent litigation and intellectual property courses at Golden Gate University School of Law and copyright law in an LLM program offered at Santa Clara University School of Law.
Capitalizing on his Stanford engineering degree and experience working as an engineer, Rob has litigated matters involving a wide range of technologies that include:
Solar mounting technology
Semiconductor fabrication and power technologies
Digital signal processing
Computer software and hardware
Enterprise Resource Planning (ERP) Software
FLASH and DRAM devices
Business methods and networked financial transactions
Graphical User Interfaces (GUIs)
Optics and optoelectronics
Optical Character Recognition (OCR)
Agricultural and manufacturing equipment
Areas of Focus
Admissions and Courts
Technology Practice Leader
Intellectual Property Practice Leader
Aqua Dynamics Systems, Inc. v. Levi Strauss & Co. (S.D. New York, Federal Circuit Court of Appeals, Ninth Circuit Court of Appeals, and private arbitration before JAMS). Lead counsel defending multi-million dollar patent infringement and licensing dispute involving ozone treatment of fabric. Matter involved separate actions filed in multiple venues over a span of seven years. Obtained summary disposition on all claims from arbitration panel and judicial confirmation of defense award in Levi Strauss & Co. v. Aqua Dynamics Systems, Inc., 473 F.Supp.3d 1004 (N.D.Cal. 2020), aff'd 2022 WL 61164 (Fed. Cir., Jan. 6, 2022).
Vistan Corp. v. Fadei USA Inc., et al. (N.D. California and Federal Circuit Court of Appeals). Retained as lead counsel for plaintiff during claim construction in infringement matter involving automated agricultural processing equipment. Filed successful appeal following adverse summary judgment motion, Vistan Corp. v. Fadei USA, Inc., 547 Fed.Appx. 986 (Fed. Cir. 2013), and resolved case following remand.
Invincible IP LLC v. Liferay Cloud, Inc. (D. Delaware). Lead counsel for defendant in patent infringement matter involving cloud storage technology. Obtained dismissal in early stages of litigation.
Hitel Technologies, LLC v. Levi Strauss & Co. (W.D. Texas). Lead counsel for defendant in patent infringement suit involving internet navigation. Plaintiff dismissed complaint with prejudice following service of preliminary invalidity contentions.
Jedi Technologies, Inc. v. Cupid Media Pty Ltd. (N.D. Illinois). Lead defense counsel in patent infringement action involving social networking algorithms and technology. Settled dispute in early stages of litigation.
Coding Technologies LLC v. Blue Diamond Almond Growers (E.D. California). Lead counsel for defendant in patent infringement matter involving optical recognition and information retrieval using bar code technology. Plaintiff dismissed action during pendency of motion to dismiss for failure to state a claim on the grounds that the asserted patent claimed unpatentable subject matter.
Tailstream Technologies LLC v. TeraRecon, Inc. (D. Delaware). Lead counsel for defendant in patent infringement matter involving medical imaging and technology. Case settled in early stages.
Icon Laser Solutions LLC v. Levi Strauss & Co. (N.D. Texas). Lead counsel for defendant in patent infringement suit involving laser treatment of denim. Reached mediated settlement following service of preliminary invalidity contentions.
In the Matter of Certain Laser Abraded Denim Garments (International Trade Commission Investigation) and RevoLaze LLC v. Levi Strauss & Co. (N.D. Ohio). Lead counsel defending infringement action involving patent portfolio drawn to laser abrading denim garments. Settled dispute in early stages of litigation.
Brandywine Communications Technology LLC v. Sonic.net, Inc. (C.D. California) and In re Brandywine Telecommunications LLC Patent Litigation (Judicial Panel on Multidistrict Litigation). Lead counsel defending internet service provider in infringement litigation involving DSLAM modem technologies.
Shum v. Intel, et al. (N.D. California). Co-Lead counsel for plaintiff during five-week jury trial involving inventorship dispute pertaining to a family of opto-electronic patents.
Moncada et al. v. West Coast Quartz Corp., et al. (Santa Clara Cty. Sup. Ct.; California Court of Appeals). Lead attorney for defendant in business dispute involving allegations of fraud, breach of contract and additional business torts. Settled after remand of three of six causes of action following Moncada v. West Coast Quartz Corp., 221 Cal.App.4th 768 (2013), review denied 2014 Cal. LEXIS 1600 (March 12, 2014).
San Francisco Intellectual Property Law Association, President (2020-2021)
University of California, Hastings College of the Law, Adjunct Professor
Golden Gate University School of Law, Adjunct Professor
International Business Law Consortium, Intellectual Property Co-Chair
American Intellectual Property Law Association
Bar Association of San Francisco
American Bar Association
Federal Circuit Bar Association
"Has Vidal’s Latest Decision Revitalised the Fintiv Rule?," WIPR (March 2023)
"Patent Suits Mostly Stayed Level In 2022, Yet Appeals Fell," Law360 (February 2023)
"After Rules Shake-Up, Albright Remains The Top Patent Judge," Law360 (February 2023)
"Q&A: What Does Vidal's Review of Apple Case Mean for Patent Owners at the PTAB?," WIPR (January 2023)
"The Three Developments Exciting US Patent Practitioners in 2023," Managing IP (January 2023)
"Fed. Circ. Won't Touch Levi's Win In Royalty Arbitration," Law360 (January 2022)
"Levi's Patent Licensing Win Upheld Over Arbitrator Bias Claims," Bloomberg Law (January 2022)
"How to Beat the Crowd When Chasing Defensive Patent Work," Law360 (October 2019)
"A Newcomer's Guide to Litigating Patent Cases in California," Law360 (September 2017)
"Patent Prosecutors Alarmed by Inequitable Conduct Ruling" Law360 (July 2017)
"What Constitutes as 'Regular and Established' Business in TC Heartland Ruling?" Inside Counsel (July 2017)
“Can the Patent System Keep Up with Digital Tech?” Inside Counsel (July 2016)
"Amazon Digs In Against ECommerce NPE" The Recorder (February 2015)
Judicial Extern Clerk to the Honorable Eugene F. Lynch, Judge of the United States District Court for the Northern District of California
"Getting Out of the Eastern District of Texas," co-author, IP LAW360 (April 2011)
"Stauffer v. Brooks Brothers: False Patent Marking Cases to Proceed," CBM Intellectual Property Update Newsletter (September 2010)
"Bilski v. Kappos: Supreme Court Permits Business Method Patents That Do Not Seek Protection on 'Abstract Ideas'," CBM Intellectual Property Update Newsletter (August 2010)
"Software Patents Under 35 U.S.C. § 271(f): Should Congress Amend § 271 to Harmonize Protection Between Tangible and Intangible Inventions?," co-author, Hastings Science and Technology Law Journal (June 2010)
"Business Methods and Patentable Subject Matter Following In re Bilski: Is 'Anything Under the Sun Made by Man' Really Patentable?," co-author, Santa Clara Computer & High Technology Law Journal (February 2010)
"Eastern District of Texas Denies Transfer of Patent Infringement Case Filed Against Geographically Diverse Defendants," IP Update, Lexology (August 2009)
"Uncertainty Regarding Business Method Patents Continues Pending Supreme Court review of Bilski," IP Update, Lexology (August 2009)
"The Supreme Court Grants Certiorari in Bilski and Stands Ready to Answer the Question: 'What is Patentable?'," Association of Corporate Counsel, San Francisco Chapter (Summer 2009)
"The Ninth Circuit Lands a 'Perfect 10' Applying Copyright Law to the Internet," Golden Gate University Law Review (2008)
"Attorney-Client Privilege Strengthened in Patent Cases," Executive Counsel (May/June 2008)
"The Effect of International Comity on the Application of the Attorney-Client Privilege and Foreign Privilege Laws in U.S. Patent Litigation," Santa Clara Computer & High Technology Law Journal (2007)
"Scope of Attorney-Client and Work-Product Waivers When Relying on an Opinion of Counsel," IP Law 360 (May 2006)
“Trends in U.S. Patent Litigation,” panelist, LexMachina Virtual Round Table (March 2023)
“IP Litigation: A Balanced Approach for 2023,” panelist, Global IP Confex (February 2023)
“The Protection of Trade Secrets: A Key Element to Increase the Value of IP Rights,” moderator, Global IP Confex (February 2023)
“Judges’ Panel: Conversation on IP Litigation,” Moderator, San Francisco Intellectual Property Law Association Annual Seminar (September 2021)
“Patent Law Year in Review," 19th Annual Golden Gate University School of Law Intellectual Property Law Conference (April 2021)
“Talking With Your Clients About Artificial Intelligence and the Unique Legal Issues it Raises,” International Business Law Consortium Webinar (April 2020)
"Protecting Intellectual Property," Capital Access Series (January 2020)
“Surveying Patent Law’s Ever-Changing Landscape — 2019 and Beyond,” Moderator, Golden Gate University School of Law 18th Annual Conference on Recent Developments in IP Law (October 2019)
“Federal and State Court Judges in Conversation on Intellectual Property,” Moderator, San Francisco Intellectual Property Law Association Annual Seminar, Calistoga, California (September 2019)
“Lawyer Recruitment and Retention – Hanson Bridgett’s Dynamic Workforce Initiative in California,” IBLC Annual General Meeting, Stockholm, Sweden (August 2019)
"Blockchain and Smart Contracts," Panelist, IBLC Annual Business Meeting, Vancouver, British Columbia (April 2019)
"High Tech and Patent Law – A World of Opportunity," Moderator, Golden Gate University School of Law (March 2019)
"Patent Protection in 2018: How Did We Get Here, Where Are We Going?," Moderator, Golden Gate University School of Law 17th Annual Conference on Recent Developments in IP Law (October 2018)
"Essential Developments in Patent Subject Matter Eligibility: What Lies Ahead in 2017?,” The Knowledge Group (June 2017)
"From the Heartland to Wonderland: How Developments in Patent Litigation are Impacting Your Clients,” State Bar of California, Litigation Section (March 2017)
“Climbing Out of the Rabbit Hole: Patent Protection in the United States Following Alice v. CLS Bank,” IBLC Annual General Meeting, Cardiff, Wales (September 2016)
“Escaping Wonderland: Businesses are Turning to Trade Secrets Protections in the Post-Alice World,” co-speaker, USLAW Network Exchange (June 2016)
“Sweeping Developments in Patent Reform Agenda: The Innovation Act and the PATENT Act – A 2016 Perspective,” panelist, Knowledge Group Webinar (May 2016)
"How to Protect Your Company By Protecting Your Intellectual Property," co-speaker, sf.citi (November 2015)
“Protecting Intellectual Property on the Internet of Things,” co-speaker, US Taiwan High Tech Forum 2015, North America Taiwanese Engineering & Science Association, Santa Clara, California (November 2015)
"Intellectual Property Strategies in the Wake of Alice," co-speaker, The McCarthy Institute for Intellectual Property and Technology Law (May 2015)
"Laches from Copyright Ruling – What You Need to Know in 2015," Knowledge Group Webinar (May 2015)
"Claim Construction after Teva Pharmaceuticals," co-speaker, The San Francisco Intellectual Property Law Association (April 2015)
“District Court Claim Construction After Teva Pharmaceuticals v. Sandoz,” co-speaker, San Francisco Bay Area Intellectual Property American Inn of Court (February 2015)
"New Paradigms in Patent Monetization and Damages," moderator, The McCarthy Institute for Intellectual Property and Technology Law, San Francisco, California (January 2015)
"Updates in Intellectual Property Damages," Golden Gate University School of Accounting, San Francisco, California (January 2015)
“Chasing Trolls Back Under the Bridge: Legislative Responses to Patent Infringement Litigation by Non-Practicing Entities,” San Francisco Intellectual Property Law Association (February 2014)
"Practicing Law and Serving Business in San Francisco and the Silicon Valley," Instituto Empresa (May 2013)
“Markman and Claim Construction Hearing in Patent Litigation: What You Need to Know,” Knowledge Congress Webinar (May 2013)
“Protecting Intellectual Property,” Keiretsu Forum Entrepreneur Academy, San Francisco and Walnut Creek, California (August and November 2012, April and June 2013, February 2014)
“Topics in Intellectual Property: Litigation with Non-Practicing Entities,” APTA Legal Affairs Seminar, Austin, Texas (February 2013)
"Update on Intellectual Property Damages,” co-presenter, California Society of CPAs, Oakland, California (October 2012)
“Legal Implications for International Companies in the US: Financing and IP Issues,” co-speaker, Plug and Play Tech Center (March and April 2012)
"Whose IP Is This? An Overview of the America Invents Act of 2011 for Early Stage Corporations,” co-presenter, Plug and Play Technology Center, Sunnyvale, California (February 2012)
"What Passes for ‘Typical’ in the Life of a Patent Litigator," University of San Francisco School of Law (February 2010 and March 2011)
"Escape from Marshall: The Future of Venue in the Eastern District of Texas for Patent Infringement Cases," San Francisco Intellectual Property Law Association (November 2009)
"Intellectual Property Damages," American Institute of Certified Public Accountants (October 2009)
"Trade Secrets: Cost Effective Protection for Valuable Business Information," Association of Corporate Counsel, Palo Alto, Ca (June 2009), San Francisco, Ca (June 2009), Seattle, Wa (June 2009)
"IP Legal Ethics Q+A," Golden Gate University, 7th Annual Conference on Recent Developments in IP Law (April 2009)
"Recent Federal Circuit and Supreme Court Developments in Patent Litigation," Palo Alto, California (August 2007)
"Ethical Considerations in International IP Practice," Santa Clara University Computer and High Technology Law Journal Symposium, Cross Border Legal Challenges in High Tech Law (January 2007)
"The Attorney-Client Privilege and the Attorney Work Product Doctrine In Patent Practice," Palo Alto, California (August 2006)