Robert L. Masterson

robert-masterson

Robert L. Masterson

Associate

Philadelphia | Cira Centre, 2929 Arch Street, Philadelphia, PA 19104-2808
+1 215 994 2311 | +1 215 994 2222

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Robert L. Masterson litigates a variety of intellectual property matters, with a focus on patent cases. His patent cases have spanned technology from mine rescue chambers to secure on-line transaction systems to power management in computer operating systems. His litigation experience also encompasses a variety of copyright, trade secret, and unfair competition cases, many of which involved computer software. He has also assisted clients with internal investigations, as well as advising on patent matters.

A former engineer, Mr. Masterson has a professional background in networked distributed computing and software. He earned a variety of awards in these fields during the years he led teams in creating leading-edge software systems, including the 1999 CIO Magazine Enterprise Value Award for the first comprehensive system for electronic submission of drug candidates to regulatory agencies; the 1977 SAS Institute Enterprise Computing Award for a system to conduct repeatable analysis of worldwide pharmaceutical clinical trial data; and the 1994 Object Honors Award for guiding the manufacturer of an intelligent diagnostic and therapeutic instrument from prototype to market.

As a coordinator of Dechert’s immigration pro bono practice group, Mr. Masterson has assisted clients in matters ranging from escaping domestic violence, to gaining the ability to work legally in the United States, to obtaining U.S. citizenship. He received the 2015 Samuel E. Klein Pro Bono Award for his work on Project IMPACT, a multi-firm effort to bring pro bono legal services to underserved rural communities in Pennsylvania; Dechert’s team also received the 2014 HIAS Golden Door Award for this work.

Significant Representations

  • Hitachi Maxell v. Top Victory Electronics (Taiwan) Co. Ltd. et al. (E.D. Tex.). Representing Hitachi Maxell in its lawsuit against display manufacturer TPV for TPV's infringement of multiple patents in Hitachi Maxell’s portfolio. Technologies involved include video signal processing, graphical display, and flat screen display structure.
  • Microsoft Technology Licensing, LLC v. Kyocera Corporation, et al. (W.D. Wa.). Represented Microsoft in its litigation initiative against cellular telephone maker Kyocera for infringement of numerous Microsoft patents that had been licensed to other Android device manufacturers. Technologies involved included computer operating systems, mobile computing devices, and telecommunications. Kyocera licensed the patents and our client settled the case.
  • JobDiva Inc. v. Monster Worldwide, Inc. (S.D.N.Y.). Represented Monster in its defense against rival JobDiva’s claims of patent infringement. Technology areas were job search engine technology and semantic searching. After a Markman ruling that eviscerated JobDiva’s claims but solidified Monster’s counterclaim for infringement of its foundational patent, JobDiva settled on terms favorable to our client.
  • Viany, Inc. v. S.F. Express (Overseas) Limited et al. (E.D.N.Y). Represented ViaNY in a trade secret and unfair competition lawsuit against a foreign corporation that terminated a joint venture and set up a competing enterprise. Technology areas included warehouse logistics and systems for on-line shopping and shipping. Case settled on terms favorable to our client.
  • Soverain Software v. Victoria’s Secret et al. (Fed. Cir.). Represented Victoria’s Secret at the Federal Circuit in its appeal of a US$45 million jury verdict of patent infringement relating to its operation of its on-line shopping site. Technology area was on-line shopping cart technology. Obtained a reversal of verdict and invalidated patent.
  • Graphics Properties Holdings Inc. v. Acer America et al. (D. Del.), Graphics Properties Holdings Inc. v. Asus Computer International (D. Del.), Graphics Properties Holdings Inc. v. Panasonic Corporation of N.A. et al. (D. Del.), Graphics Properties Holdings Inc. v. Toshiba America Information Systems Inc. (D. Del.), Graphics Properties Holdings Inc. v. Vizio, Inc. (D. Del.). Represented Graphical Properties Holdings, Inc., the owner of the patent portfolio created by computer graphics pioneer Silicon Graphics, Inc., in multiple patent infringement actions against television manufacturers. Technology areas included processor architecture, LCD construction, and graphics algorithms.
  • Maxim Integrated Products, Inc. v. Citigroup Inc. (E.D. Tex.), Maxim Integrated Products MDL (W.D. Pa.). Represented Citigroup in defending against a patent infringement case targeting Citi’s mobile banking applications and infrastructure. The bulk of the proceedings occurred in a Multi-District Litigation in the Western District of Pennsylvania. Technology areas included secure transaction systems and electronic currency. Case settled on terms favorable to our client.
  • EverNu Technology, Inc. v. Rohm and Haas Company (multiple fora). Represented Rohm and Haas in its successful defense against abuse of process allegations by a disgruntled former employee that followed Rohm and Haas’ successful action against the employee for misappropriating its trade secrets relating to chemical manufacture. The case involved a successful removal from federal court in the Eastern District of Pennsylvania, litigation in the Court of Common Pleas in two Pennsylvania counties, and appellate work in the Pennsylvania Superior Court, and resulted in a complete victory for our client.
  • Brainware, Inc. v. Kofax, Inc. (E.D. Va.). Represented Kofax in a trade secret and unfair competition case brought by a competitor, Brainware. Technology area was software for document information capture. Case settled on terms favorable to our client. 
  • ExitExchange Corp. v. Casale Media, Inc. et al. (E.D. Tex.). Represented CPX Interactive in defending a patent infringement suit in the Eastern District of Texas accusing its Internet advertising systems. Technology areas included web browser-mediated popup windows. Case settled on terms favorable to our client. 
  • Secure Axcess, LLC v. Dell Inc. (E.D. Tex.). Represented Citigroup in its defense of a patent infringement case targeting Citi’s on-line banking system. Technology areas included single sign on, session persistence, and server security. Case settled on terms favorable to our client. 
  • Zumro, Inc. v. Strata Safety Products, LLC, et al. (E.D. Pa.). Represented Strata in its defense of a patent infringement suit brought by a competitor. Technology area was refuge chambers for use in surviving mine accidents. Case settled on terms favorable to our client.
  • Minkus Electronic Display Systems, Inc. v. Scala, Inc. (D. Del). Represented Scala in its defense against a patent infringement action brought by a non-practicing entity that accused its commercial display monitor systems. Technology area concerned remote display systems. Case settled on terms favorable to our client. 
  • Site Update Solutions, Inc. v. Monster Worldwide, Inc., et al. (E.D. Tex, and N.D. Cal.). Represented Monster in its defense against a patent infringement action brought by a non-practicing entity that accused its on-line job board of infringement. Technology areas were XML and website maps. Case settled on terms favorable to our client.
  • Xantel, Inc. v. Merck & Co., Inc. (D.N.J.). Represented Merck in a breach of contract case involving software licenses originally owned by one of its subsidiaries. Technology area was manufacturing resource planning. Case settled on terms favorable to our client. 
  • Soverain Software v. QVC, Inc. et al. (E.D. Tex.). Represented QVC in its defense of a patent infringement suit in the Eastern District of Texas brought by a non-practicing entity accusing the QVC.com web-based shopping site. Technology areas included e-commerce and shopping cart technologies. Case settled on terms favorable to our client. 
  • Alcatel-Lucent U.S.A. v. QVC, Inc. et al. (E.D. Tex.). Represented QVC in the Eastern District of Texas in its defense of a patent infringement suit brought by the holder of the Bell Labs patent portfolio, Alcatel-Lucent, accusing aspects of QVC’s telephone-based and web-based shopping systems. Technology areas included search engine, session management, and shopping cart technologies. Aggressive defense invalidated Alcatel-Lucent’s key patent, and the case settled on terms favorable to our client. 
  • Synygy, Inc. v. ZS Associates, Inc., et al. (E.D. Pa.). Defended ZS Associates in a copyright and trade secret lawsuit brought by a competitor, Synygy, involving off-shore development of software to assist its clients in maximizing staff effectiveness. Technology areas included incentive compensation and models for optimal resource allocation.
Education
  • Princeton University, B.S., Electrical Engineering and Computer Science, 1988, cum laude
  • Carnegie Mellon University, M.S., Cognitive Psychology, 1990
  • Temple University Beasley School of Law, J.D., 2009, cum laude; managing editor, Temple Law Review, Robert C. Podwil Memorial Prize for Intellectual Property Law, Barrister Award in Trial Advocacy
Admissions
  • Pennsylvania
  • New Jersey
  • United States District Court for the District of New Jersey
  • United States Court of Appeals for the Federal Circuit
  • United States District Court for the Eastern District of Pennsylvania
Memberships
Benjamin Franklin American Inn of Court
Dechert LLP Technology Committee