Paul A. Taufer

Paul A. Taufer

Partner
About

Paul Taufer is experienced in handling all aspects of domestic and international intellectual property law. 

This includes patent prosecution and litigation; trademark and copyright prosecution and litigation; trade secrets; unfair competition; licensing; infringement; clearance investigation and analysis; interferences; trademark oppositions and cancellations; post-grant review, reexamination and reissue proceedings; product development, mergers and acquisitions; and issues pertaining to inventorship and ownership.

Paul has sophisticated experience in strategic patent prosecution for companies ranging from startups to fortune 500 companies. This includes developing broad and deep ranging patent portfolios covering key products and technologies in the US and abroad. The work also bridges patent prosecution and litigation through comprehensive market evaluations of competitor activity to strengthen patent portfolios and enhance and/or establish positions of infringement.

In addition, Paul has a deep level of expertise in developing tailored strategies for companies of all sizes for how best to monetizing patent portfolios, including through business collaborations, licensing, sale of patents and litigation.

Paul also counsels companies on how best to protect itself from assertions by third parties, including through conducting landscape analysis, freedom to operate assessments and opinions of noninfringement and invalidity to identify and reduce risks of patent infringement.

Paul also has extensive expertise in connection with issues of patent eligibility in the US and abroad, including in connection with both patent prosecution and litigation. This includes strategies to develop patent portfolios that are deemed to be patent eligible as well as being less susceptible to later patent challenges. Similarly, this experience includes evaluations to assess patent eligibility of patents of others and developing strategies for potentially challenging validity in the patent offices or courts. This experience covers a wide range of technologies including software, business methods and financial services where patent eligibility has been a particularly important issue.

Paul has served as trial counsel in domestic and international litigation. He has represented clients in state and federal courts and before the Patent Trial and Appeal Board in post-grant review proceedings, including inter partes review, and in proceedings before the prior Board of Patent Appeals and Interferences and the Trademark Trial and Appeal Board in various inter partes and ex parte proceedings at the United States Patent and Trademark Office. Paul's patent litigation experience includes both asserting and defending claims of patent infringement and invalidity. In the US, he has litigated patent cases in the federal courts and in bankruptcy court. Internationally, he has litigated patent cases in Germany and the United Kingdom. The subject matter covered various technologies in the electrical, electro-mechanical, software, business methods and mechanical fields.

Paul has also represented clients in relation to issues of inventorship, including interferences in the United States Patent and Trademark Office. His trademark litigation experience includes asserting and defending claims of trademark infringement in the federal and state courts. In addition, Paul has also represented clients in trademark opposition and cancellation proceedings in the trademark offices in the US, Spain, Germany, the United Kingdom, Japan and Australia. He has litigated copyright infringement actions in the US federal courts and in the United Kingdom. Paul has also advised US and international clients on issues including corporate structuring, research and development, product acquisition and proprietary rights. Paul has extensive experience in multi-party patent litigation, including establishing and managing joint defense groups among counsel for separate defendants, representation of co-defendants, and defending companies in patent infringement actions asserted by patent holding companies or "patent trolls".

Paul handles patent matters for clients in the electrical, electromechanical, mechanical and software technologies, including communications, computer hardware and software, e-commerce transactions, networking and Internet-related patent applications, financial services, stock exchanges, sports betting, climate modelling, business methods, electronic data storage and retrieval, remote actuators, signal regeneration, monitoring devices, electronic controls, access hardware and closure fasteners, gaming, security, fashion, real estate, commodities, energy, aircraft, consumer electronics, foods, lighting, pharmaceuticals, medical devices and procedures, metering, ophthalmology, semiconductors, valve design and operation, pulmonary aerosolizers and inhalers, blood collecting and purification, fuel dispensing, ice generation, roofing materials, packaging and sludge processing

Bar admissionsNew JerseyPennsylvaniaUnited States Patent and Trademark Office

EXPERIENCE

  • Representation of plaintiff sports betting company in patent infringement action pertaining to sports betting systems in the District of Delaware
  • Representation of defendant stock exchange in trademark infringement and counterfeiting action in the District of Delaware
  • Representation of defendant manufacture of maternity apparel in patent infringement action pertaining to online marketing and sale of products in the Eastern District of Texas
  • Representation of defendant pharmaceutical company in patent infringement action pertaining to medical devices for medicinal product delivery in the District of Oregon
  • Representation of plaintiff fitness apparel manufacture in design patent infringement action pertaining to yoga and exercise clothing in the District of Delaware
  • Representation of defendant mobile wireless provider in patent infringement action pertaining to network communication systems in the Eastern District of Texas
  • Representation of defendant class of new construction home builders in patent infringement action asserted against entire real estate industry and relating to patents dealing with computer networks and methods of locating available real estate for sale, brought by patent holding company in the US District Court for the Central District of California
  • Representation of defendant international standards-based wireless technology organization comprised of multi-national, well known public companies, governmental regulatory groups, and universities in patent infringement action relating to wireless mesh networks against patent holding company in Central District of California, as well as companion reexamination actions pursued in the US Patent and Trademark Office
  • Representation of international conglomerate of fifteen companies as general intellectual property counsel and in business areas including systems for facilitating negotiations and consumer transactions between buyers and sellers, commodity and futures trading, credit default swaps, clearing and settling of consumer trades, and electronic trading platforms. Exemplary matters have included sale of patent portfolio to patent holding company, patent, copyright and trademark prosecution, opinions as to patentability, noninfringement and invalidity, litigation as to patent, copyright and trademark infringement, licensing, due diligence and mergers and acquisitions
  • Representation of software developer in financial services industries including banking and commodities, for patent prosecution, and opinions as to patentability, noninfringement and invalidity. Exemplary areas have included electronic accounts management, consumer transactions, commodity, futures and bond trading and clearing
  • Representation of stock exchange for patent and trademark prosecution, opinions as to patentability, noninfringement and invalidity, and litigation as to patent infringement. Exemplary areas have included electronic transactions, portfolio management and stock trading
  • Representation of banking and lending company for patent prosecution and opinions as to patentability, infringement and invalidity. Exemplary areas have included automated teller machines and electronic accounts management
  • Representation of financial services and asset management company for patent prosecution and opinions, and in areas including credit and debit transactions, credit approvals, account establishment and electronic accounts management
  • Representation of electric utility company for patent prosecution and litigation in relation to areas of financial management, electronic payments, smart card and mag stripe transactions
  • Representation of software company that develops products for supply chain management as defendant in multi-party patent infringement action brought by patent holding company in the District of Massachusetts as to patents covering enterprise systems that operate to facilitate, enhance, improve or relate to multivariate negotiations among two or more parties or businesses
  • Representation of defendant consumer electronics manufacturer in patent infringement action in Southern District of California and companion reexamination actions pursued in the US Patent and Trademark Office
  • Representation of defendant real estate brokers and agents in patent infringement, patent misuse, antitrust and RICO action against patent holding company and its principals, in the US District Court for the Eastern District of Pennsylvania
  • Representation of plaintiff international tire manufacturer in patent and copyright infringement and unfair competition action relating to high end tire brands, in the US District Court for the Northern District of New York
  • Representation of global leader of outdoor power equipment as defendant in patent infringement action relating to power saws in the Eastern District of Pennsylvania
  • Representation of plaintiff surgical equipment manufacturer in patent infringement action dealing with methods and apparatus for performing ocular surgery, in the US District Court for the Eastern District of Pennsylvania
  • Representation of snack foods manufacturer as plaintiff in patent infringement action relating to rice crisps in the Northern District of Ohio
  • Representation of international manufacturer of gas turbines and combustion equipment in theft of trade secrets, breach of contract and breach of fiduciary duty action as plaintiff pursued against competitor formed by former officer of company, in the Eastern District of Texas
  • Representation of international manufacturer of military and civilian airplanes and helicopters as plaintiff in contracts action against supplier in the Eastern District of Pennsylvania
  • Representation of plaintiff international aircraft manufacturer in environmental and contracts action against contractor and remediation company relating to massive diesel spill in the District of New Jersey
  • Representation of manufacturer of aircraft as defendant in insurance coverage action in District of Connecticut
  • Representation of plaintiff electric utility company and manufacturer of power generation equipment and metering devices in patent infringement action relating to power grids and smart metering systems in the Eastern District of Pennsylvania
  • Representation of manufacturer of security systems for aircraft, computer systems, credit and debit cards, and personal identification including passports and licenses, as general intellectual property counsel, and in areas including sale of patent portfolio with patent holding company, patent and trademark prosecution, opinions and litigation
  • Representation of global leader in stored energy solutions for industrial applications in patent infringement dispute relating to online advertising and sales systems against patent holding company
  • Representation of leading provider of storage hardware solutions that promote data recovery and improve cloud computing in patent prosecution and opinions as to noninfringement and invalidity
  • Representation of cloud computing and telecommunications company as general intellectual property counsel and in areas including patent prosecution, opinions as to noninfringement and invalidity, due diligence and initial public offering
  • Representation of leader in high accuracy timing solutions for resolving timing and manufacturing challenges for leading edge semiconductor companies in copyright infringement dispute against key competitor
  • Representation of defendant developer and publisher of video games in patent infringement action pertaining to controlling and automatically animating lip synchronization and facial expressions of three dimensional animated characters in the District of Delaware
  • Representation of plaintiff apparel manufacturer in patent infringement action pertaining to expandable waist portion in garments in the Eastern District of Pennsylvania
  • Representation of defendant data service provider in patent infringement action pertaining to icloud data storage in the Eastern District of Texas
Education
  • J.D., Widener University School of Law 1990
  • J.D., Temple University 1986

Bylines

  • "United States Patents – You Have To Play To Win," IGaming Business, May 1, 2013
  • "Playing the Patents Game," IGaming Business, July, 2015

Seminars

  • Presenter, "Advocating for Patent Clients: DLA Presents to the USPTO at the NYSE," United States Patent and Trademark Office’s Site Experience Education Program, July 2023

Memberships And Affiliations

  • Pennsylvania Bar Association
  • New Jersey Bar Association
  • American Intellectual Property Law Association
  • American Bar Association
  • Philadelphia Bar Association
  • Philadelphia Intellectual Property Law Association

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