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Robert E. Rudnick
Partner
Newark, NJ
New York, NY
Partner
Newark, NJ
New York, NY
Rob’s practice broadly focuses on strategic intellectual property transactions, licenses, and client counseling directed to freedom to manufacture and clearance of new products and services, building and leveraging patent portfolios and deploying cost-effective strategies in defending against non-practicing patent entities. He also has experience in developing tailored information security programs and data privacy-related agreements to achieve clients’ business goals and comply with applicable laws and regulations, while managing risk and potential liability. Rob also regularly counsels clients in a wide variety of intellectual property matters, including patent procurement and portfolio development strategies; generation of value from patent portfolios; patent and technology licensing; patent clearance studies; patent non-infringement/invalidity evaluations and opinions; corporate mergers and acquisitions; and patent prosecution, especially in the medical device and telecommunication technologies. In addition, Rob has significant business and legal experience negotiating and providing counsel in connection with intellectual property-based transactions, as well as transactions related to data privacy and security. He has also counseled and defended clients from aggressive patent licensing entities such as non-practicing entities (a/k/a “patent trolls”). He spent time in various in-house roles at AT&T and subsequent spin-off companies Lucent Technologies and Avaya Inc. Rob is particularly well-known for his deep knowledge and skill in connection with drafting complex software and technology license agreements including software-as-a-service and subscription agreements; drafting transaction agreements between corporate partners, vendors, and customers addressing data privacy and security issues; performing intellectual property due diligence reviews; and drafting associated agreements with the goal of appropriately managing a client’s risk under such agreements. Rob has published and presented on many topics related to intellectual property transactions.
Prior to joining Gibbons, while at Avaya, Rob handled intellectual property issues important to Avaya’s domestic and multinational technology businesses, both in the manufacturing and services business sectors. His practice directly affected governance and operation of Avaya’s business and included developing intellectual property policies concerning software, patent and trademark filing, mergers and acquisitions, divestitures, investor relations, and employee hiring, resignations, and dismissals. Rob guided the establishment of Avaya’s positions governing the activities of its representatives before standards bodies and negotiated intellectual property aspects arising in domestic and international software licenses, sales and services agreements, including intellectual property defense and indemnification provisions, intellectual property ownership, and Open Source software. Rob also provided advice and counsel regarding patent and trademark procurement strategies to leverage and protect the corporation’s intellectual property assets, and he defended Avaya from allegations of patent infringement.
Before joining Avaya, Rob was a member of Lucent Technologies’ Patent Assertion Team, which received favorable notoriety in the article “Soldiers of Fortune,” COM-American Lawyer’s Corporate Counsel Magazine (June 1998), for the revenues it generated based on Lucent’s patent portfolio. In that role, he utilized experience in patent portfolio management, negotiation skills, and knowledge of patent prosecution and domestic and foreign infringement laws to provide patent assertion and licensing support in negotiating domestic and international patent license agreements.
Prior to attending law school, Rob was an electrical engineer for the David Sarnoff Research Center, developing hardware and software for the design and test of television components and medical and data communications equipment.
Rutgers School of Law – Newark, J.D.
Rutgers School of Engineering, B.S., high honors
United States District Court for the Southern District of New York, United States District Court for the Eastern District of New York, United States Patent and Trademark Office (Reg. No. 36,260), United States District Court for the District of New Jersey
Included on IAM Patent 1000 – The World’s Leading Patent Practitioners list
New Jersey Intellectual Property Law Association
Chair, Electronics, Telecommunication & Software Committee, 2012-2021
Chair, Intellectual Property Licensing Committee, 2014-2021
Past President, Board of Directors, 2014
President, Board of Directors, 2013
President-Elect, Board of Directors, 2012
Vice President, Board of Directors, 2011
Secretary, Board of Directors, 2010
Treasurer, Board of Directors, 2009
American Intellectual Property Law Association
New York Intellectual Property Law Association