Robert B. Dulaney III
||Having spent four years in-house as patent counsel, Robert understands the business needs of companies trying to protect their intellectual property, and defend against accusations of infringement.
Direct Dial: 770-709-0086
Robert has 15 years of litigation experience, and 11 years of experience in intellectual property law. His practice includes client counseling, trademark clearance opinions, trademark prosecution, patent infringement and validity opinions, and patent drafting and prosecution. Robert also litigates copyright, trademark, anti-cybersquatting, and patent cases in District Courts throughout the United States. He has litigated patent cases before the U.S. International Trade Commission, and has briefed appeals before the Court of Appeals for the Federal Circuit.
Robert is currently an attorney at Smith Tempel in the litigation and prosecution groups. His litigation practice includes representing both plaintiffs and defendants in copyright, trademark, and patent infringement litigation in various District Courts. Robert's prosecution practice primarily involves drafting and prosecuting patent applications in the fields of fiber optics, wireless systems, computer software, mechanical devices, and business methods. He also advises clients on trademark issues, including preparing clearance opinions and prosecuting trademark applications.
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, litigating a patent case before the U.S. International Trade Commission through trial and appeal, providing patent infringement and validity opinions, and prosecuting patents in the field of computer systems.
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 Thomas, Kayden, Horstemeyer & Risley from 2000 to 2003. Robert's practice at Thomas Kayden included drafting and prosecuting patent applications for telecommunications systems, mechanical devices, and business methods. He also litigated patent, trademark and copyright cases in various District Courts, as well as domain name disputes under the ICANN Domain Name Dispute Policy.
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.
- 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).
- BNE (USA), Inc. v. Budget Electronics & Sports, Inc., et al., U.S. District Court for the Northern District of Georgia (Represented the defendant in this copyright suit concerning importation of allegedly infringing foreign television programs).
- 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).
- Chemical Products Technologies, LLC v. Christopher Shadbolt, WIPO (Represented complainant/trademark owner in this domain name dispute under the ICANN Domain Name Dispute Policy).
- Cyber-Care, Inc. et al. v. University of Texas Medical Branch, WIPO (Represented complainant/trademark owner in this domain name dispute under the ICANN Domain Name Dispute Policy)
- Europacific Parts v. Horn & Bauer GmbH & Co. KG, U.S. District Court for the Central District of California (Represented the defendant/trademark owner in this trademark infringement and trademark dilution suit concerning consumer products).
- Henning Mediation et al. v. Corblet Corp., WIPO (Represented the complainant/trademark owner in this domain name dispute under the ICANN Domain Name Dispute Policy).
- Hill-Phoenix, Inc. v. Systematic Refrigeration, Inc., U.S. District Court for the Eastern District of Virginia (Represented the plaintiff/patentee in this patent suit for infringement of software and variable speed compressor system patents for the commercial refrigeration industry).
- Laserdynamics, Inc. et al. v. Lite-On IT Corp. et al., U.S. District Court for the Southern District of Texas (Represented the defendant in this patent suit concerning alleged infringement of patents pertaining to DVD-ROM products).
- Shepherd Management Group, Inc. v. Ashley Furniture Indus., Inc., U.S. District Court for the Northern District of Georgia (Represented the plaintiff/copyright and trademark owner in this suit concerning infringement of copyrights and trademarks relating to retail furniture sales and training literature).
- Toshiba Corp. v. Lite-On IT Corp. et al., U.S. District Court for the Central District of California (Represented the defendant in this patent suit concerning alleged infringement of patents pertaining to DVD-ROM products).