Robert W. Ashbrook

robert-ashbrook

Robert W. Ashbrook

Counsel

Philadelphia | Cira Centre, 2929 Arch Street, Philadelphia, PA 19104-2808
+1 215 994 2215 | +1 215 994 2222

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Robert W. Ashbrook handles patent, trademark, trade secret, and non-compete litigation and disputes in federal and state courts, before the Patent Trial and Appeal Board, and in the U.S. International Trade Commission. A registered patent attorney, Mr. Ashbrook counsels clients on patent validity and infringement and on the acquisition and management of their IP portfolios, including due diligence for the purchase and assertion of intellectual property. He also prepares and prosecutes patent applications.

With an engineering degree from M.I.T. and experience in integrated circuit wafer fabrication and packaging, Mr. Ashbrook is able to quickly assess those technologies. He is also familiar with the software, medical device, aviation, and construction industries.

Before law school, Mr. Ashbrook was both co-owner of a construction company and an engineer for a leading telecomm company. Mr. Ashbrook understands his clients' needs from business, technical, and legal perspectives.

Mr. Ashbrook is a licensed commercial airplane pilot, an elder in the Swarthmore Presbyterian Church, a volunteer for (and former director of) the Homeless Advocacy Project in Philadelphia, and a former professional ski instructor. He is also a fellow of the National Speleological Society, a trustee of the National Speleological Foundation, and the author of several cave-related books, most recently The Caves of Pennsylvania in the Eighteenth Century.

Significant Representations

  • Won dismissal of an inter partes review ("IPR") petition that resulted in the Patent Trial and Appeal Board's first-ever precedential opinion in an IPR.
  • Obtained a judgment invalidating two key patents asserted against a large software-as-a-service company by a competitor in the Southern District of New York.
  • Following the first day of trial in the U.S. International Trade Commission, obtained an unconditional dismissal of all patent, trademark, and trade dress infringement claims brought against Anaheim Manufacturing Company by its principal competitor.
  • Obtained a US$13.5 million public settlement for a medical device company following a two week jury trial against a competitor who hired away the company’s product development director.
  • Helped win a large jury verdict on behalf of a semiconductor equipment manufacturer in patent litigation with a foreign competitor regarding wafer handling and processing equipment.
  • Won years of additional patent term adjustment by suing the Patent Office on behalf of a major branded pharmaceutical company and other clients.
  • Won dismissal of patent infringement and trade secret cases filed against one of the nation’s largest insurers concerning tax-planning business methods.
  • Brought an offensive action in the U.S. International Trade Commission against one of the world's largest computer manufacturers regarding an integrated circuit fabrication patent, leading to the manufacturer's willingness to accept global settlement of multiple lawsuits across several jurisdictions.
  • Obtained a valuable settlement for a leading pharmaceutical clinical trial provider in the early stages of litigation, clearing the way for sale of one of the client’s business units.
  • On behalf of a name-brand manufacturer, used patent litigation to quickly force a generic competitor to change its product formulations.
  • Avoided threatened litigation for a client who hired key employees away from a competitor, obtaining key concessions with a creative settlement agreement. 
  • Filed a declaratory judgment suit for a U.S. manufacturer to quickly obtain a royalty-free license.
Education
  • Massachusetts Institute of Technology (MIT), B.S., Materials Science and Engineering, 1983, AMAX undergraduate thesis award
  • University of Pennsylvania Law School, J.D., 2002, cum laude, Order of the Coif, member of law review
    Intern for the Honorable Franklin S. Van Antwerpen, U.S. District Court for the Eastern District of Pennsylvania
Admissions
  • Pennsylvania
  • New Jersey
  • Supreme Court of the United States
  • United States Court of Appeals for the Third Circuit
  • United States District Court for the District of New Jersey
  • United States Court of Appeals for the Federal Circuit
  • United States Patent and Trademark Office
  • United States District Court for the Eastern District of Pennsylvania
Memberships
American Intellectual Property Law Association
Philadelphia Bar Association IP Committee
Philadelphia IP Law Association