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Roberto Capriotti

Partner
+1.412.355.6423
Fax +1.412.355.6501

Roberto Capriotti focuses his practice on Intellectual Property law, primarily in the preparation, prosecution, and litigation of high technology patents, trademarks, and copyrights. Roberto also counsels clients on intellectual property strategy, portfolio development, and transactional matters.

Patent Litigation: Roberto’s practice involves representing clients in patent infringement litigation and has litigated patents regarding magnetic storage density, digital imaging, and video compression technology. In particular, Roberto was part of K&L Gates’ core team representing Carnegie Mellon University (CMU) in the CMU v. Marvell Technology Group case. Following the Federal Circuit’s affirmance of the infringement and validity jury verdicts, the defendant agreed to pay the firm’s client, CMU, $750 million―the largest patent infringement settlement ever for computer science patents.

Roberto also played a role in Apple v. Kodak patent litigation involving digital cameras and image processing technology and represented complainants and respondents in section 337 intellectual property infringement investigations brought before the ITC, including obtaining a judgment of non-infringement, invalidity, and no domestic industry against Apple.

PTO Litigation: Another substantial portion of Roberto’s practice involves Patent Office post-grant proceeding including Inter Partes Review (IPR) and reexamination proceedings including in the context of litigation and product development strategy.

Patent Procurement: Roberto’s practice also encompasses the preparation and prosecution of patent applications for a range of technologies including electrical and electronic systems including computers, microprocessors, software, firmware, internet, nanotechnology, disk drives, wired and RF wireless telecommunications devices and equipment, smartphones, routers, switches, timing error recovery, Viterbi sequence detectors, global positioning systems, optics, digital imaging and compression, and medical devices.

Client Counseling: In addition, Roberto’ s practice involves counseling clients on patent matters, such as developing patent portfolios, non-infringement and freedom-to-use counseling and opinions, and negotiating business transactions. Roberto’s practice also encompasses the analysis and preparation of non-infringement, patentability, and freedom-to-use opinions for various technologies including industrial automation systems, haptic touch feedback devices, mobile devices, spectrum analyzers, and medical devices.

Additional Background: Prior to joining the firm, Roberto held various positions as a patent agent and as an electronics design engineer where he designed microprocessor embedded systems including telecommunication devices, sensors, and instruments for various industries including energy measurement and distribution systems. In particular, Roberto developed hardware, software, and firmware for smart meters, flow computers, and telecommunications equipment development.

REPRESENTATIVE INTELLECTUAL PROPERTY MATTERS

  • Communication Systems: digital signal processing, video compression (H.264/MPEG-4), software applications, graphical user interfaces (GUI), mobile phones, smartphones, global positioning system [GPS]integrated circuits), Bluetooth, IEEE 802.11 wireless local area networks (WLAN), Wi-Fi, IEEE 802.16 wireless metropolitan area networks (WMAN or WiMAX), coder/decoder modules, phase locked loops, radio frequency (RF) digital power amplifiers, microware amplifiers, modulators, forward error correction techniques for high data rates wireless transmission systems, multiple-input and multiple-output (MIMO) wireless antenna systems, radio frequency identification tag (RFID) technology, wearable RF patches, and wireless aircraft avionics systems
  • Networking: voice over Internet protocol (VoIP), network interface cards, telecommunications, telephone networks and equipment, routers, switches, timing and error recovery circuits, Kalman filter circuits, dynamic host configuration protocol (DHCP), and network password attack security software
  • Semiconductor Devices and Circuits: transistors, flash memory devices, optical devices and systems, and nanotechnology circuit elements radiation hardened semiconductors, light emitting diode (LED) illumination technology, and electroactive polymer actuators
  • Microprocessors: core processors, mobile platforms, video graphics systems, computers, disk drives, and software
  • Medical Devices: surgical cutters/staplers, ultrasonic surgical instruments, electrosurgical instruments, endoscopes, digital medicine, ingestible sensors.
  • Robotics: window cleaning autonomous robots, surgical robots, autonomous vehicles.

Professional/Civic Activities

  • American Intellectual Property Law Association (AIPLA) (Member 2005 – Present)
  • AIPLA Membership Committee and Committee on Board Nominations (2014 – Present)
  • AIPLA Emerging Technologies Committee (Chair, 2013 – 2014; Vice Chair, 2011 – 2013)
  • AIPLA Intellectual Property Practice in Latin America Committee (Chair, 2009 – 2011; Vice Chair, 2007 – 2009)

Speaking Engagements

  • Panelist, "Interested in Intellectual Property ("IP") Law?" Carnegie Mellon University, January 13, 2010.
  • Moderator, "A Global Perspective of IP Licensing - A Comparative Discussion; Do's and Don'ts; and How Recent Developments Have Changed Licensing Practices Around the World," American International Property Law Association (AIPLA) Annual Meeting, October 21, 2009.