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
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
"Biden's AI Order: 3 Key Takeaways," WIPR (November 2023)
"Latest copyright ruling should give brands pause for thought on AI creativity," The Drum (August 2023)
"What you need to know about the copyright issues surrounding generative AI," The Drum (August 2023)
"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