Roberta is a high-technology IP counsel and litigator. Her decades-long practice in intellectual property law focuses on helping technology companies actively grow assets, acquire other companies, license new products and protect their IP assets.

Roberta’s career began in engineering, where she created her own patent (U.S. Patent 4,963,425). As an IP attorney, she draws on her experience and passion as an innovative creator to secure patent applications for her clients successfully. Roberta knows firsthand that both companies and individual inventors contend with the “race to the patent office” to file a newly created invention application quickly, thoroughly and concisely within the scope of protection. With her deep engineering experience, Roberta’s technical acumen, coupled with her business and legal insight, enables her to quickly understand, describe and advocate for cutting-edge innovations, offering a critical competitive advantage to clients. Roberta has drafted patent applications in 5G, 4G and 3G wireless technologies, 3D holograms, artificial intelligence (AI), virtual reality (VR), and semiconductor physics.

Additionally, Roberta advises on strategy and risk management for patent and trademark issues. She directs clients on significant patent portfolio transactions, both acquisitions and divestitures, with each involving thousands of patents. She’s built a 1000+ patent portfolio, supported licensing revenues of more than $20 million, and completed a $1 billion merger. An industry expert and thought leader, Roberta advises technology managers, outside counsel, stakeholders and executives. She provides innovative solutions for technology patents through claim charting, due diligence and assessments for offensive and defensive use. She is adept at navigating the legal nuances of patent preparation, enforcement, IP management, and litigation for clients ranging from domestic and foreign multinational companies to technology startups.

Representative Matters

Of Roberta’s many IP cases in which she has been involved, the following two examples provide insight into her talent and passion for patents, patent litigation, and helping her clients succeed in business:  

Roberta is a passionate advocate for new technology and licensing that technology to create better lives and build businesses. As an example, Roberta was retained by a small hologram company to draft the first patent on 3D holograms. She quickly prepared and filed a patent application and recommended the company debut the technology at the Coachella Valley Music and Arts Festival. The “patent pending” technology quickly started trending and was featured on all three major news networks’ evening broadcasts, which led to significant initial product orders and business revenue.

The Court of Appeals for the Federal Circuit upheld the validity of patent claims for a voltage patent Roberta wrote and prosecuted for a client. The patent covers a semiconductor chip that efficiently generates power for mobile devices and was the subject of a Patent Trials and Appeals Board (PTAB) invalidity challenge. Six of the eight claims in the patent survived the PTAB challenge. The alleged infringer then sued in Federal District court, which also upheld the remaining claims in the patent. After losing in Federal District Court, the defendant appealed to the Court of Appeals for the Federal Circuit, which also upheld the claims. Patents that go through PTAB proceedings have most, if not all, claims invalidated, with up to 92% of challenged patents found defective. Only 4% of all PTAB proceedings end with a final written decision upholding all of the claims. Roberta’s work on this patent from beginning to end survived the extreme scrutiny of multiple proceedings in multiple courts, despite opposing counsel who were from multiple firms regarded as “best of the best” in patent litigation.

Publications and Presentations

• Striking the Right Note to Make Notable DEI Progress, Bloomberg Law, May 2023.
• Patenting Blockchain and Distributed Ledger Technologies, Practising Law Institute, December 2022.
• 66th Annual Intellectual Property, Information & Privacy Law Conference: Center for Intellectual Property, Information & Privacy Law, University of Illinois Chicago, November 2022.
• Battling Bias in Artificial Intelligence, IPOEF Podcast, October 2022.
• Tips for Tackling Workplace Macro & Microaggressions, Bloomberg Law, October 2022.
• Top Ten List for Patent Licensing, ACC Webinar, March 2022.
• The Job Was a Perfect Fit & I Wasn’t Considered, Bloomberg Law, March 2022.
• Trends in Patent Prosecution, IP Watchdog and LexisNexis Webinar, November 2021.
• A Third Option: Limited IP Waiver Could Solve Our Pandemic Vaccine Problems, IP Watchdog, July 2021 (with Jamaica Szeliga).
• 6 Ways To Guide Applications Under New Patent Classification, Law360, June 2021 (with Brian Michaelis).
• 5 Tips for Responding to Alice Patent Eligibility Rejections, Law360, December 2020.
• Brexit Creates Uncertainty for IP, Law360, August 2017.

Bar Admissions

• California Utah
• U.S. Patent and Trademark Office

Education

• J.D., University of North Carolina – Chapel Hill, 2002
• Articles Editor, North Carolina Journal of International Law and Commercial Regulation
• National Moot Court team