Rafael Perez-Pineiro
Attorney at Law
Florida
FL, Patent Bar
About
experience
Representative Clients
Practice Areas
Client Reviews
"Rafael is an outstanding patent attorney with a good mix of legal, technical and business skills."
"Rafael was an outstanding patent attorney who always helped the process rather than hindered it. In addition he always saw the positives in the disclosures and always tried to help out in various ways. When Rafael left IBM our group suffered substantially due to his absence. He was greatly missed and I am sure very valued at his next company. Rafael was a true pleasure to work with."
Work History
The Brickell IP Group, PLLC
Partner
Oct 2017 - Present
Prepare and prosecute patent and trademark applications in various fields, including wireless technology, software, power generation, digital signal processing, and furniture designs. Author patent infringement and invalidity opinions. Counsel clients on patent, copyright, and trademark matters. Handle IP litigation and draft commercial agreements.
McDonald Hopkins
Partner
Jun 2016 - Oct 2017
Handled all aspects of litigations involving the alleged infringement of patented wireless technology, and copyright infringement and trade secrets misappropriation of audiovisual works, including direct examination of witness at preliminary injunction hearing, presenting evidence of non-infringement in open court, and settling the disputes. Served as a patent legal expert and a technology expert
Feldman Gale
Partner
Apr 2009 - Jun 2016
Served as Lead Counsel in several proceedings before the Patent Trial and Appeal Board (“PTAB”), including Inter Partes Review (“IPR”) and Covered Business Method (“CBM”) proceedings, including Lead Counsel work at a CBM trial. Managed all aspects of IP litigation. Counseled clients on use of open-source software. Assisted with the drafting of merger and asset purchase agreements.
IBM
IP Attorney
Jul 2003 - Mar 2009
Drafted guidelines for use of open-source code. Negotiated and reviewed membership agreements of standards organizations. Evaluated invention submissions and managed prosecution of patents. Briefed senior management on IP issues, including domestic patent infringement and trademark opposition proceedings. Supported IP portfolio divestitures and IP licensing. Drafted commercial agreements.
Stroock & Stroock
Associate
Jul 2005 - Jul 2006
Managed all pre-trial aspects of IP litigation including patent, copyright, trademark, and unfair competition disputes. Argued discovery and Markman hearings. Conducted and defended depositions of parties and key witnesses. Drafted briefs and summary judgment motions. Prepared pre-trial disclosures and stipulations. Assisted experts in the preparation of expert reports.
Blank Rome
Associate
Jul 2000 - Jul 2003
Argued claim constructions and presented technology tutorials at Markman hearings. Prepared and prosecuted patent and trademark applications.Evaluated operation of complex systems accused of patent infringement. Conducted pre-litigation investigation of potential patent infringers. Ascertained value and scope of patents as part of pre-acquisition due diligence. Authored opinions.
Finnegan Henderson
Student Associate
Mar 1999 - Jul 2000
Prepared patent applications in the areas of electrical engineering and computer science. Responded to Office Actions from the United States Patent and Trademark Office (“USPTO”). Conducted research and analysis in various areas of patent law including contributory and induced infringement. Drafted legal memoranda and letters to clients.
United States Patent and Trademark Office
Patent Examiner
Jun 1998 - Mar 1999
Examined patent applications, performed prior art searches, and drafted Office Actions in the area of computer networks. Interviewed with attorneys concerning pending patent applications.
National Security Agency
Electronics Engineer
Aug 1994 - Jun 1998
Administered a Relational Database Management System. Developed database applications including reports, forms, and graphical user interfaces. Implemented encryption algorithms in several computer languages. Programmed microcontrollers in assembly language. Designed wireless communications systems and devices.