Mr. Robert D. McCutcheon, Attorney

Robert D. McCutcheon is a Partner at Munck Wilson Mandala, LLP, where he practices primarily in the Intellectual Property section.  He has over 15 years experience in domestic and foreign intellectual property procurement, exploitation, enforcement and counseling in patents, trademarks, copyrights and trade secrets.  His vast technical expertise includes semiconductors, telecommunications, hardware, software, medical devices, fiber optics, as well as the electro-mechanical and mechanical arts.

Mr. McCutcheon has a broad range of legal experience in patent matters, including domestic and international patent preparation and prosecution, patent infringement and litigation matters (enforcement and defense), patent reexamination proceedings, opinions, licensing, and various matters related to mergers and acquisitions involving intellectual property.  He also has extensive experience with a multitude of trademark matters including procurement of domestic and foreign trademarks and registrations, inter partes proceedings before the Trademark Trial and Appeal Board, trademark infringement and litigation matters, and client counseling.

Prior to joining Munck Wilson Mandala, LLP in 2002, Mr. McCutcheon was intellectual property counsel for STMicroelectronics (f/k/a SGS-Thomson Microelectronics), an international semiconductor company, and was previously associated with two major Texas law firms and a prominent Texas intellectual property boutique. Prior to his legal career, Mr. McCutcheon worked for several years as an electronic/systems engineer with McDonnell Douglas in St. Louis.

Mr. McCutcheon was named in 2004 as both a Rising Star and a Texas Super Lawyer by Texas Monthly Magazine, and again listed as a Texas Super Lawyer in 2005 and 2008-2013 and a National Super Lawyer in 2009-2013.

Representative Experience:

• Rendered legal opinions of non-infringement and invalidity for patents-in-suit asserted against a medical device manufacturer.
• Defend fiber optics connector manufacturer in patent infringement action; successfully sought and obtained a USPTO order for reexamination of all claims in the patent-in-suit resulting in amended reexamination claims foreclosing plaintiff's multi-million dollar damages claim.
• Defend manufacturer of vinyl and composite sheet piling for seawall and bulkhead retaining systems in patent infringement action; successfully sought and obtained a USPTO order for reexamination of all claims in a patent-in-suit and a stay of the action pending reexamination and resulting in amended reexamination claims foreclosing plaintiff's multi-million dollar damages claim.
• Responsible for domestic and foreign patent procurement for major telecommunications equipment manufacturer, and major semiconductor manufacturer.
• Successfully enforced service mark rights of Spanish-language radio broadcasting company in infringement action; defendant settled for license.
• Responsible for procurement and enforcement of worldwide trademark portfolio for US-based children's toy and furniture manufacturer.

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