Ronald J. Schoenbaum is a partner in Knobbe Martens Olson & Bear LLP's Orange County and Silicon Valley, Calif., offices. He focuses on patent prosecution, strategic patent portfolio management, and infringement/validity studies for information technology companies. As part of his practice, he frequently conducts in-house sessions with software developers and engineers to help clients identify and prioritize patentable inventions. Before law school,Schoenbaum obtained a masters degree in electrical engineering from Cornell and then worked as a design engineer for IBM. He joined the firm in 1993.

Q: What is the most challenging case you have worked on and what made it challenging?

A: Our firm was recently asked to analyze a portfolio of over 1,000 patents in less than one week. Our client was considering placing a bid on the portfolio, and wanted us to rate and summarize each patent — and the portfolio as a whole — in terms of various criteria (quality, claim scope, relevance to industry, relevance to specific competitors, etc.). The most challenging part (aside from staying awake while reading patents late at night!) was to assemble and manage the large team of attorneys needed to complete the task. These types of short-fuse due diligence projects are becoming fairly common, but are always very challenging.

Originally published in Law360, New York on May 22, 2013.

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Topics:  Infringement, Inventors, Litigation Strategies, Patent Applications, Patent Examinations, Patent Reform, Patent-Eligible Subject Matter, Patents, SCOTUS, Software

Published In: Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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