Robert advises and assists clients in all aspects of their intellectual property matters. His
practice includes building and managing large and strategically important patent
portfolios for companies that range in size from Fortune 500 companies to emerging
technology start-ups. Robert frequently counsels clients and provides opinions on matters
of patent infringement, invalidity, patentability, and performs freedom-to-operate
investigations to evaluate and minimize risks of patent infringement by new products and
product lines.
Robert C. Hilton
Partner
T: +1 214 932 6406
F: +1 214 932 6499
[email protected]
2000 McKinney Avenue
Suite 1400
Dallas, TX 75201
PRACTICES
Intellectual Property
Patents
Patent Prosecution and Counseling
IPR/CBM
Robert also represents clients in disputes including federal patent infringement matters
and complex adversarial proceedings in the United States Patent & Trademark Office
such as Inter Partes and Covered Business Method Reviews. He has argued and
obtained favorable decisions on behalf of clients appearing as Petitioners, as well as those
appearing as Patent Owner in these post-grant proceedings.
Robert’s representation of clients spans both jurisdictional lines and many diverse fields
of technology. He has pursued and obtained patent protection for clients in over 75
countries, and this international experience collaborating with foreign attorneys and
navigating the laws of both U.S. and foreign jurisdictions allows him to craft tailored
prosecution strategies to achieve the right balance between maximizing patent protection
and controlling costs.
He has substantial experience in patent issues facing the energy, telecomm, medical
device, and aerospace industries. In the energy industry, he has represented traditional oil
and gas companies, most significantly in relation to downhole tools and methods
associated with exploration and production. He has also represented companies focused
on renewable energy sources, including solar, wind, wave, and tidal energy. In the
medical device arena, Robert’s experience includes portfolio development for orthopedic,
spinal, cardiac, advanced dressings and wound care devices. In addition to these areas, he
also counsels clients in the areas of software, semiconductors, consumer products, and
other mechanical and electro-mechanical devices.
Robert’s practice includes drafting and negotiating intellectual property licenses and
other complex commercial agreements, including asset purchase agreements, lending
agreements, supply agreements, and employee agreements. He works closely with private
equity firms, venture groups, and lenders seeking to invest in or lend to companies with
intellectual property holdings. He regularly performs due diligence on acquisition targets
or borrowers to ensure that the revenue generation of the company is properly aligned
with its intellectual property assets. Robert’s work with investors, financial service
providers, and senior executives requires him to take a business-minded approach to
addressing clients’ intellectual property needs.
EXPERIENCE
• Gamino v. American Telephone & Telegraph Company, et al. (D. Del. 2012) —
Represented defendant Sprint in patent infringement action involving payment and
dialing methods for completing tolled telephone calls. Case settled and dismissed.
• Leon Stambler v. Intuit Inc., et al. (E.D. Texas [Marshall Div.] 2010) — Represented
defendant Benchmark Bank in patent infringement action involving mobile banking
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Robert C. Hilton
software. Case was dismissed without prejudice shortly after filing.
• Wolf Run Hollow, LLC v. Herring Bank et al. (N.D. Texas [Dallas Div] 2010) —
Represented defendant Benchmark Bank in a patent infringement action relating to
secured transactions. Case settled and was dismissed shortly after filing.
• Pylon Mfg. Corp. v. Jamak Fabrication-Tex, Ltd., (D. Del. 2009) —Represented
defendant Jamak in a patent infringement action brought in Delaware after Jamak
filed a declaratory judgment action in N.D. Texas. Case settled and was dismissed
shortly after filing.
• Jamak Fabrication-Tex, Ltd. v. Pylon Mfg. Corp. (N.D. Tex. [Ft. Worth Division]
2009) — Represented plaintiff Jamak in a declaratory judgment action against Pylon
Manufacturing asserting non-infringement and invalidity of Pylon's patent. Case
settled shortly after filing.
• Robert Bosch, LLC v. Jamak Fabrication-Tex, Ltd, et al. (D. Del. 2008) —
Represented Jamak in a patent infringement suit brought by Bosch. Case settled and
was dismissed shortly after filing.
• Jamak Fabrication-Tex, Ltd. d/b/a Jamak Fabrication, Inc. v. Portage Plastics
Corp., et al. (N.D. Tex. 2007) — Represented Jamak in declaratory judgment action
for non-infringement and invalidity and accompanying state court action. Case
settled shortly after filing.
EDUCATION
• The University of Texas School of Law, JD, 1999
• The University of Texas at Austin, BSME, 1994
ADMISSIONS
• Texas
• U.S. Court of Appeals for the Federal Circuit
• U.S. District Court for the Eastern District of Texas
• U.S. District Court for the Northern District of Texas
• U.S. Patent and Trademark Office
EVENTS
• Moderator, "IP Litigation, Royalty Agreements and Other IP Issues," 6th Annual
Medical Device and Life Sciences Conference, November 18, 2014
AFFILIATIONS
• Member, American Intellectual Property Law Association
• Member, Dallas Bar Association
• Member, Intellectual Property Law Section of the State Bar of Texas
The McGuireWoods website provides information of general interest to the public. The website does not offer
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Robert C. Hilton
legal advice about specific situations or problems. You should consult a McGuireWoods lawyer if you have legal
issues requiring attention. Nothing on this site creates an express or implied contract. McGuireWoods does not
intend to create an attorney-client relationship by inviting you to contact us. Unless and until we and you agree
that we will represent you, we will not have any duties to you, including any duty to keep what you send us
confidential or any duty to protect your interests. This means that nothing you send us will be kept confidential,
unless we mutually agree that we will keep it confidential. Past legal successes described on this website are not
indicators of future results. The outcome of particular legal matters is dependent upon the facts and law
applicable to the matters.
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