Eagle Robinson
Head of Patents, United States
Norton Rose Fulbright US LLP
Related services and key industries
Biography
Eagle Robinson's focus is intellectual property law – both litigation and transactional – though he also has experience with health-care related regulatory issues and has litigated trade-secret and business-tort claims.
Eagle represents clients in post-issuance patent validity proceedings before the Patent Trial and Appeal Board (PTAB), as well as in litigation in federal district courts. Eagle has succeeded on behalf of patent owners in inter partes reviews (IPRs) in which the PTAB upheld all challenged claims of the subject patents, and on behalf of petitioners in IPRs in which the PTAB invalidated all challenged claims of the subject patents. Eagle has also successfully argued before the US Court of Appeals for the Federal Circuit. In litigation, Eagle has represented clients in federal district courts in the Eastern, Southern, and Northern Districts of Texas, the Eastern District of Virginia, Delaware, and the Eastern District of Michigan.
Eagle's transactional work includes negotiating joint-development agreements and patent licenses, conducting intellectual property due diligence, and performing freedom-to-operate and patentability evaluations. Eagle also maintains an active patent-prosecution docket and has prosecuted numerous utility and design patents to issue.
Eagle guides Fortune 500 companies, universities, hospital systems, and start-ups in the development and implementation of strategies to effectively and efficiently secure and defend their intellectual property assets.
In the course of his litigation and transactional work, Eagle has worked with a broad range of mechanical and electrical technologies, including:
- medical devices related to endoscopy, intraosseous access, endovascular catheters, biosensors, and surgical robots;
- oil and gas completion and stimulation technologies, and well-control systems;
- manufacturing technologies such as rapid-prototyping and packaging systems;
- consumer and construction products;
- optical filters and imaging systems; and
- card payment and information systems.
Eagle is admitted to practice before the US Patent and Trademark Office, all of the US District Courts in Texas, and the US Court of Appeals for the Federal Circuit.
Previously, Eagle worked for two years during law school as a Patent Agent and law clerk at an intellectual property law firm in Oklahoma City.
Professional experience
Collapse allJD, honors, University of Oklahoma
BS, summa cum laude, Mechanical Engineering, University of Oklahoma
While in law school, Eagle was an articles editor on the American Indian Law Review and was a member of teams representing the University of Oklahoma in ABA National Appellate Advocacy Competitions. Eagle was also president of the student Intellectual Property Society and was selected for membership in both the Order of the Coif and the Order of the Barristers.
- Texas State Bar
- US Patent and Trademark Attorney
- Representation of oil and gas company accused of patent infringement, including filing successful IPRs that resulted in invalidation of all asserted patent claims and obtaining stay of litigation during pendency of the IPRs, and successfully arguing before the Federal Circuit to affirm the IPR decision
- Representation of Fortune 300 oilfield services company in connection with a multi-forum patent dispute with a competitor and its licensee related to fracking technologies. Successfully argued before the PTAB to uphold the validity of all claims of three client patents, and led the development of IPR petitions invalidating competitor's asserted patents.
- Briefed and argued successful Rule 12(b)(6) motion in the Eastern District of Virginia that resulted in invalidation of all claims of both asserted patents as claiming ineligible subject matter
- Coordinating development and enforcement of Intellectual Property portfolio for multi-industry manufacturing and service company, including trademarks and patents, as well as in litigation and negotiations to resolve patent and trademark infringement claims
- Negotiation of joint-development agreements on behalf of leading renewable-energy and consumer-products companies
- Negotiation of patent licenses with leading manufacturers of broadcasting and connectivity solutions
- Appeal to Patent Trial and Appeal Board resulting in reversal of all examiner rejections
- Negotiation of favorable dismissal of all claims against software company accused of patent infringement
- Patent clearance searching and counseling for large medical-device company relating to potential acquisition targets
- Counseling hospital system on development of procedures for identifying and pursuing patent protection for inventions
- Preparation and prosecution of numerous utility and design patent applications
- Counseling medical-device company on various insurance and regulatory issues related to entry into Texas market
- IAM Strategy 300: The World’s Leading IP Strategists 2024
- Legal 500 US, Recommended lawyer: Intellectual property: Patents: Prosecution (including re-examination and post-grant proceedings), The Legal 500, 2024
- The Best Lawyers in America, Litigation - Intellectual Property, Best Lawyers, 2024 - 2025
- The Best Lawyers in America, Litigation - Litigation - Patent, Best Lawyers, 2024 - 2025
- No. 1 Best-Performing PTAB Attorney Overall (representing petitioners or patent owners), Patexia Inc., PTAB Intelligence Report 2024
- Top 10 Best-Performing PTAB Attorneys (representing petitioners), Patexia Inc., PTAB Intelligence Report 2022-2024
- Top 50 Best-Performing PTAB Attorneys (representing petitioners or patent owners), Patexia Inc., PTAB Intelligence Report 2023
- Top 100 Best-Performing PTAB Attorneys (representing petitioners or patent owners), Patexia Inc., PTAB Intelligence Report 2022
- Top 100 Best-Performing PTAB Attorneys (representing petitioners or patent owners), Patexia Inc., PTAB Intelligence Report 2020
- The 100 Most Active CAFC Attorneys Representing Appellees, Patexia Inc., CAFC Intelligence Report 2023
- The 100 Best Performing CAFC Attorneys Representing Appellees, Patexia Inc., CAFC Intelligence Report 2023
- "On The Rise, 2018 Professional Excellence Awards," Texas Lawyer, ALM Media Properties, 2018
- Texas Rising Star, intellectual property, Thomson Reuters, 2017 - 2018
- Acritas Star, Acritas, 2017 - 2021
- Co-author with Tillman J. Breckenridge and Daniel Leventhal, "Patent State of Mind: Supreme Court Grants Cert in Global-Tech on Legal Standard for Inducing Infringement," Fulbright & Jaworski L.L.P. Client Briefing, October 2010
- Co-author with Jody Bishop, "Wyeth v. Kappos – Federal Circuit Extends Terms of Certain Patents," Fulbright & Jaworski L.L.P. Client Briefing, January 2010
- Co-author with Mark Garrett, "PTO Rescinds Controversial Rules and Pushes for Substantive Rulemaking Authority," Fulbright & Jaworski L.L.P. Client Briefing, October 2009
- Co-author with Mark Garrett and Richard Zembek, "Matter of First Impression' – District Court Orders Return of Sunset Royalties Paid for Patent Later Invalidated on Appeal," Fulbright & Jaworski L.L.P. Client Briefing, December 2008
- "Infringing Sovereignty: Should Federal Courts Protect Patents & Copyrights from Tribal Infringement?" 32 Am. Ind. L. Rev. 233, 2007 - 2008
- Panel, "Yes, No, Maybe So – Examining Current [Patent Trial and Appeal] Board Approaches to Discretionary Denial," PTAB Bar Association 2024 Annual Meeting (Washington D.C. | March 2024)
- "Post-Grant Proceedings: IPR/PGR | PTAB Update," Oklahoma Bar Association 2023 Intellectual Property Law Seminar and Mid-Year Meeting (June 2023)
- "Post-Grant Proceedings: IPR/PGR | PTAB Update," Oklahoma Bar Association 2022 Intellectual Property Law Seminar and Mid-Year Meeting (June 2022)
- "Inter Partes Review (IPR): Overview & PTAB Updates," Oklahoma Bar Association 2021 Intellectual Property Law Seminar and Mid-Year Meeting (June 2021)
- "Inter Partes Review (IPR): Overview & PTAB Updates," Oklahoma Bar Association 2020 Intellectual Property Law Seminar and Mid-Year Meeting (June 2020)
- "Inter Partes Review (IPR): Overview & PTAB Updates," Oklahoma Bar Association 2019 Intellectual Property Law Seminar and Mid-Year Meeting (June 2019)
- Panel, "Administrative Effects on the Plaintiff-Defendant Balance," 18th Annual Texas Intellectual Property Law Journal (TIPLJ) Symposium (Austin, TX | February 22, 2019)
- Co-presenter with Charles Walker, "Witness Preparation: Ethical Yet Practical Considerations for District Court and PTAB Proceedings," HIPLA / UH 34th Annual Fall Institute on Intellectual Property Law (Galveston, TX | September 27 – 29, 2018)
- Moderator, "Innovation & Gender Bias: Exploring the cost of lost opportunities," AUTM 2018 Central Region Meeting (Minneapolis, MN | July 2018)
- "Inter Partes Review (IPR): Developments & Opportunities," Oklahoma Bar Association 2018 Intellectual Property Law Seminar and Mid-Year Meeting (June 2018)
- Association of University Technology Managers - Central Region Planning Committee
- Planning Committee Chair, 2019-2022
- Program Co-Chair, 2018 Central Region Meeting
- Central Region Planning Committee, 2013-present
- Austin Intellectual Property Law Association, Member 2008-present, Amicus Committee 2010-2012
- Texas Bar Association