Robert M. Asher

Robert M. Asher

Partner

(P) 617-443-9292, ext 224

(F) 617-443-0004

rasher@sunsteinlaw.com

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Education

Massachusetts Institute of Technology, B.S., Electrical Engineering, 1978

Harvard Law School, J.D., 1981

Robert M. Asher

Robert Asher leads the post-grant proceedings teams at Sunstein leveraging his deep experience in patent litigation and patent prosecution. He is an astute and accomplished advocate for inventors and businesses affected by patents. Clients, such as ActiveVideo Networks, Superspeed Software and Silent Systems, have been richly rewarded from Bob’s prosecution work on their patents. He co-chairs the firm’s Patent Practice Group and is the chair of the Patent Office Litigation Group.

Experience

  • He has been sought out for his expertise in defending valuable patents challenged in inter partes review and reexamination, while the patents were being asserted in patent infringement litigation.
  • Persuaded the Federal Circuit Court of Appeals to limit reliance by the Patent Trial and Appeal Board (PTAB) on “common sense” to invalidate patents.  The successful appeal is reported in the case of Arendi S.A.R.L. v. Apple.
  • Argued the In re Swanson appeal forcing the Federal Circuit Court of Appeals to address the issue of substantial new question of patentability in view of parallel litigation in the district courts.
  • Developed patent portfolios that have contributed to significant acquisitions, licenses and litigation settlements.
  • A software patent pioneer, having been one of the first to patent an expert system in the mid-1980’s.
  • Prosecuted a patent application to allowance in less than six months using an accelerated examination procedure.
  • He has made extensive use of his knowledge of patent office tactics and procedures. In one situation, by figuring out how reexamination or reissue could be used effectively to strengthen the client’s patent, Bob was able to deflate a challenge to the existing license, preserving the royalty payments to the client.
  • Defeated a patent infringement claim for a Fortune 500 client in district court and the Federal Circuit by successfully making use of the doctrine of judicial estoppel.
  • Bob has challenged patents in the United States Patent and Trademark Office by filing reexaminations or protests that successfully limited the scope of the competitor’s patents.
  • Bob has rendered opinions regarding validity or infringement and assisted with designing around patents. In one case, Bob’s opinion of invalidity was challenged in court and he was required to testify on behalf of our client. The court and jury were persuaded consistent with the logic of Bob’s opinion and testimony that the patents in question were invalid.
  • Bob has prosecuted patent applications for a wide variety of businesses and technologies including integrated circuits, data storage, interactive television, financial services, medical equipment, pharmaceuticals, food, digitizing tablets, bottling and weighing equipment, microwave antennas, caching, scanning, printing, telecommunications and bar codes.
  • Bob devotes a significant portion of his practice to intellectual property litigation matters in which he has worked on behalf of numerous companies, of national and international scope. Specific patent cases have involved technologies including automotive trim carpets, interactive cable television, power converters, solar cells, microwave antennas, consumer electronic appliances, satellite tuners, robot arms, call routing, flame detectors and ACL surgery. In other intellectual property litigation, he has addressed issues of copyright infringement, trade dress and trademark infringement.
  • Representative cases include:
    • Exergen Corp. v. KAZ USA, Inc.
      U.S. District Court for the District of Massachusetts
    • VLT, Inc. v. Power One, Inc.
      U.S. District Court for the District of Massachusetts and Federal Circuit Court of Appeals (lead attorney)
    • Astec International v. Sharp Electronics
      U.S. District Court for the District of Colorado
    • Plasma Physics v. Sanyo Electric and Sears Roebuck 
      U.S. District Court for the Northern District of Illinois
    • Gates Formed Fibre v. Delaware Valley Corp.
      U.S. District Court for the District of Massachusetts
    • Terry Scheller v. Leather Loft Store et al. 
      U.S. District Court for the District of Massachusetts
    • Andrew Corp v. Gabriel Electronics, Inc. 
      U.S. District Court for the District of Maine
    • Knop et al. v. Allen 
      U.S. District Court for the District of Maine (interference)
    • ICTV v. Worldgate 
      U.S. District Court for the Eastern District of Pennsylvania
    • 3M v. Briteline 
      U.S. District Court for the District of Minnesota
    • McGuire et al. v . Acufex 
      U.S. District Court for the District of Massachusetts
    • Amgen v. Hoffman La Roche 
      U.S. District Court for the District of Massachusetts
    • Bowers v. Baystate Technologies 
      U.S. District Court for the District of Massachusetts
    • Vornado v. Duracraft 
      U.S. District Court for the District of Kansas
    • Scansoft, Inc. v. ART Advanced Recognition Technologies
      U.S. District Court for the District of Massachusetts
    • Honeywell Consumer Products, Inc. v. Windmere Corp. and White Westinghouse 
      U.S. District Court for the District of Massachusetts
    • Honeywell Consumer Products, Inc. v. Windmere Corp. 
      U.S. District Court for the District of Massachusetts
    • Lemelson v. United States and Cincinnati Milacron 
      U.S. Court of Claims
    • Bryant v. Electronics Corporation of America 
      U.S. District Court for the District of Massachusetts
    • Etonic v. Weight-Rite Golf Corp.
      U.S. District Court for the District of Massachusetts

Professional Involvement

  • Bob has been a frequent seminar panelist for the American Intellectual Property Law Association.
  • Co-chair of the Patent Sub-committee of the Intellectual Property Litigation Committee of the Litigation Section of the American Bar Association.
  • Active member of the Patent Law Committee of the American Intellectual Property Law Association.

Honors

  • Bob graduated from Massachusetts Institute of Technology with a degree in electrical engineering with honors from Tau Beta Pi and Eta Kappa Nu. He received his law degree from Harvard Law School.
  • Bob was named to the Super Lawyers® list in the practice area of intellectual property 2007-2017 in Massachusetts, a list limited to the top 5 percent of attorneys in each region. The attorneys featured in Super Lawyers were selected by their peers in an extensive nomination and polling process conducted by the research team at Super Lawyers, a service of Thomson Reuters and seen in a special advertising section inBoston magazine.

Bar and Court Admissions

  • He is registered patent attorney number 30,445 on the register of the United States Patent and Trademark Office.
  • He is admitted to the state courts of Massachusetts and Illinois.  His federal court admissions include the United States Supreme Court, the Court of Claims, the Federal, First and Seventh Circuit Courts of Appeal, the district courts of Massachusetts and Northern District of Illinois.
  • He is a member of the American Intellectual Property Law Association, Federal Circuit Bar Association, American Bar Association, Boston Patent Law Association, Boston Bar Association and the International Intellectual Property Association.

*The Martindale-Hubbell Peer Review Icon is a service mark of Reed Elsevier Properties Inc., used under permission from Reed Elsevier Properties Inc. in accord with the terms and conditions established by Martindale-Hubbell.