Robert B. Dulaney III
||Having spent four years in-house, Robert understands the business needs of clients trying to protect their intellectual property, and defend against accusations of infringement.
Direct Dial: 770-709-0086
Robert has 20 years of litigation experience, and 17 years of intellectual property experience. In addition to litigation, Robert’s practice includes client counseling, patent drafting and prosecution, patent infringement and validity opinions, and trademark prosecution and opinions.
Robert practices in the prosecution and litigation groups of Smith Tempel. He is also the leader of the litigation group. In that capacity he drafts and prosecutes patents in the electrical and mechanical arts for both small companies and industry leaders, prepares patent infringement/validity opinions, prosecutes trademarks, and prepares trademark clearance opinions. He also advises clients on intellectual property issues including licensing, development, and acquisition agreements.
In his litigation practice, Robert represents plaintiffs and defendants in trademark and patent infringement litigation in district courts throughout the country, in patent inter partes reviews before the Patent Trial and Appeal Board, and in trademark oppositions and cancellations before the Trademark Trial and Appeal Board. He also represents clients in appeals to the Court of Appeals for the Federal Circuit.
Before joining the firm, Robert was of-counsel at Finnegan, Henderson, Farabow, Garrett & Dunner from 2007 to 2010. At Finnegan, Robert practiced both trademark at patent law, including one year as acting in-house trademark counsel for a Fortune 50 client.
Robert was also the head patent counsel at Home Depot U.S.A., Inc. from 2003 to 2007, responsible for patent matters world-wide. His duties included client counseling, patent portfolio development and management, negotiating vendor and licensing agreements, preparing freedom to operate opinions, providing advice on M&A transactions, and patent litigation management.
Prior to Home Depot, Robert was a senior associate at an Atlanta intellectual property firm where his practice included patent drafting/prosecution and litigating patent, trademark and copyright cases.
Before 2000 Robert spent a year as an associate at a general litigation firm and over 5 years as a U.S. Air Force Judge Advocate, focusing on criminal litigation as both prosecutor and defense counsel.
- Law school
University of Georgia School of Law, J.D., cum laude, 1993
- Undergraduate college
Georgia Institute of Technology, B.S., Applied Physics, 1990
Robert is a member of the State Bar of Georgia, and is admitted to practice before the Georgia Superior and State Courts, the Georgia Court of Appeals, the Georgia Supreme Court, the United States District Courts for the Northern and the Middle Districts of Georgia, and the United States Courts of Appeal for the 11th Circuit and the Federal Circuit. He is also registered to practice in the United States Patent and Trademark Office.
- Past Co-Chairman, Trademark Committee, Intellectual Property Law Section of the State Bar of Georgia
- American Intellectual Property Law Association (AIPLA)
- Federal Circuit Bar Association
- State Bar of Georgia, Intellectual Property Law Section
- Anton/Bauer, Inc. v. PAG, Ltd., U.S. District Court for the District of Connecticut (Represented the defendant in this patent suit concerning alleged infringement of patent pertaining to battery packs for professional video cameras).
- BlackBerry Corp., et al. v. Zipit Wireless Inc., Patent Trial and Appeal Board (Represented defendant/patent owner in four inter parties reviews over handheld wireless devices and device management systems, resulting in defense verdicts for three of the four patents after trial).
- Certain Variable Speed Wind Turbines and Components Thereof (Inv. No. 337-TA-641), U.S. International Trade Commission (Represented the defendant, Mitsubishi Heavy Industries, Ltd, in this patent suit concerning alleged infringement of variable speed wind turbine controller patents).
- Hill-Phoenix, Inc. v. Systematic Refrigeration, Inc, ., Eastern District of Virginia (Represented plaintiff in patent infringement action over variable speed compressor systems for the commercial refrigeration industry, resulting in favorable settlement).
- Nutramax Laboratories, Inc. v. Davis Manufacturing and Packaging Inc., Northern District of Georgia (Represented defendant in patent infringement action over pet nutritional supplements, resulting in favorable settlement).
- Realtime Data, LLC v. T-Mobile USA, Inc., et al.,Eastern District of Texas (Represented defendant T-Mobile patent infringement action over data compression methods, resulting in defense verdict).
- VEM LLC v. Bass Pro, Inc., et al., District of South Carolina, Northern District of Alabama, Northern District of Georgia (Represented plaintiff in design patent infringement action over fishing lure design, resulting in favorable settlement).
- Venturi Jet Sets, Inc. v. Custom Molded Products, Inc., District of Utah (Represented defendant in patent infringement action over spa/pool fittings, resulting in dismissal of claims).
- Zipit Wireless Inc. v. BlackBerry Limited, et al., District of South Carolina (Represented plaintiff in patent infringement action over handheld wireless devices and device management systems, resulting in favorable settlement).
- Athens Barre, LLC v. Savvier, LP, Middle District of Georgia (Represented plaintiff in declaratory judgement action against party alleging trademark infringement, resulting in favorable settlement).
- Century Systems, Inc. v. Dreambrands, Inc., Northern District of Georgia (Represented plaintiff in trademark infringement action, resulting in favorable settlement).
- International Culture Exchange Group Inc. v. Harifa Inc., et al., Northern District of Georgia (Represented plaintiff in trademark infringement action, resulting in preliminary injunction against defendants and defendants abandoning their festival).
- Michael Ludwig v. The Vapor Route, LLC, ., Trademark Trial and Appeal Board (Represented defendant in trademark cancellation, resulting in defense verdict after motions).
- Shepherd Management Group, Inc. v. Ashley Furniture Indus., Inc., Northern District of Georgia (Represented plaintiff in copyright and trademark infringement action, resulting in favorable settlement).
- The Cartoon Network, Inc. v. Sunnywood Inc.,Trademark Trial and Appeal Board (Represented plaintiff in trademark cancellation action, resulting in defendant amending its trademark).
- Thomas Flynn v. TT WoodCare A/S, Trademark Trial and Appeal Board (Represented plaintiff in trademark opposition, resulting in favorable settlement).