Robert L. Hails Jr.

Partner

Washington, D.C.
T +1.202.861.1692
F +1.202.861.1783

Overview

Robert Hails represents clients in high-stakes patent infringement matters, developing multi-faceted defense strategies across U.S. district courts, the U.S. International Trade Commission (ITC) and the U.S. Patent and Trademark Office. He is an adept “engineering storyteller,” able to distill arcane technologies into basic elements, allowing judges and juries to assess disputed issues in an intuitive manner.

Bob appears regularly in court. He has taken and cross-examined technical witnesses at trial, argued Markman hearings and argued at inter partes review oral hearings. And he has defended our clients’ wins at the Federal Circuit.

Bob is particularly strong in electrical engineering disciplines such as computer architectures, integrated circuit designs, semiconductor manufacturing, Internet-based software systems and electric power systems.

Select Experience

Litigation
  • Argued Federal Circuit appeals defending client wins at district court, the ITC and IPRs. All cases affirmed.
    • MyMail, Ltd. v. ooVoo, LLC (2021)
    • Bracco Diagnostics Inc. v. Jubilant DraxImage (2021)
    • Bracco Diagnostics Inc. v. Int’l Trade Comm’n. (2021)
    • British Telcomm. v. IAC/InterActiveCorp (2020)
  • Defended client in ITC investigation involving controls for wind turbine generators. Led technical defense, which included product redesigns that enabled client to remain in U.S. market notwithstanding violation by obsoleted controls. Variable Speed Wind Turbine Generators, ITC Inv. 337-TA-1218.
  • Defended client in ITC investigation involving computer-controlled radio-pharmaceutical infusion systems, where all asserted claims were declared obvious over prior art. Strontium-Rubidium Radioisotope Infusion Sys., ITC Inv. 337-TA-1100.
Prosecution
  • Managed the prosecution efforts on behalf of client for analog integrated circuit designs, video coding and distribution systems and enterprise management systems.
Enforcement
  • Represents clients in response to monetization efforts from patent enforcement entities, both nonpracticing entities and companies with large research and development expenditures. 
More »

Experience

Litigation
  • Argued Federal Circuit appeals defending client wins at district court, the ITC and IPRs. All cases affirmed.
    • MyMail, Ltd. v. ooVoo, LLC (2021)
    • Bracco Diagnostics Inc. v. Jubilant DraxImage (2021)
    • Bracco Diagnostics Inc. v. Int’l Trade Comm’n. (2021)
    • British Telcomm. v. IAC/InterActiveCorp (2020)
  • Defended client in ITC investigation involving controls for wind turbine generators. Led technical defense, which included product redesigns that enabled client to remain in U.S. market notwithstanding violation by obsoleted controls. Variable Speed Wind Turbine Generators, ITC Inv. 337-TA-1218.
  • Defended client in ITC investigation involving computer-controlled radio-pharmaceutical infusion systems, where all asserted claims were declared obvious over prior art. Strontium-Rubidium Radioisotope Infusion Sys., ITC Inv. 337-TA-1100.
  • Defended clients in district court against infringement claims directed against various online services, where four patents were held invalid at the Rule 12 stage. British Telecomm.v. IAC/InteractiveCorp, 1-18-cv-00366 (D.Del.).
  • Defended a client in district court against infringement claims involving browser toolbar plug-ins, where two patents were held invalid at the Rule 12 stage. MyMail, Ltd. v. ooVoo, LLC, 5-17-cv-04487 (N.D. Cal.).
  • Challenged a patent to video streaming techniques. Vimeo v. British Telecomm., IPR2019-00833.
  • Invalidated two patents to computer-controlled radio-pharmaceutical infusion systems. Jubilant DraxImage v. Bracco Diagnostics, IPR2018-01448, -1449, -1450.
  • Challenged seven patents to integrated circuit fabrication techniques. Renesas Elecs. v. Lone Star Silicon Innovations, IPR2017-01872, 1873, -1868, -01869, -01989, -02123, -2124.
  • Defended client in district court against infringement claims directed to semiconductor manufacturing techniques for backside illuminated image sensors. Patents invalidated on inter partes review. Sony Corp. v. Raytheon, IPR2016-00209, IPR2015-01201.
  • Defended client in district court against infringement claims directed to “4T” pixel sensors in imaging chips. Obtained summary judgment of non-infringement and JMOL of prior art invalidity. L-3 Comm. v. Sony, 1-10-cv-00734 (D.Del.).
  • Defended client at ITC where infringement claims against multiformat memory card readers were defeated. Microprocessors, Components Thereof, ITC Inv. 337-TA-781.
  • Invalidated patent to multiformat memory card reader on inter partes review. HP v. MCM Portfolio. IPR2013-00217. Defended constitutionality of IPRs in Federal Circuit appeal. MCM Portfolio v. HP, 15-1052.
Prosecution
  • Managed the prosecution efforts on behalf of client for analog integrated circuit designs, video coding and distribution systems and enterprise management systems.
Enforcement
  • Represents clients in response to monetization efforts from patent enforcement entities, both nonpracticing entities and companies with large research and development expenditures. 

Recognitions and Memberships

Recognitions

  • The Legal 500 United States 
    • Recommended in Patent: prosecution (including reexamination and post-grant proceedings)
  • IAM Patent 1000: The World's Leading Patent Practitioners
    • DC Metro Area: Recognized for Patent Prosecution (2016 to 2021)

Memberships

  • American Intellectual Property Law Association
  • Federal Circuit Bar Association

Admissions

  • U.S. Court of Appeals, Federal Circuit
  • U.S. District Court, Eastern District of Texas
  • U.S. District Court, Eastern District of Virginia
  • U.S. Patent and Trademark Office, Registration No. 39,702
  • District of Columbia
  • Virginia

Education

  • J.D., The George Washington University Law School, 1993, with Honors
  • B.S., Electrical Engineering, University of Maryland, 1990