Robert H. Thornburg

Overview

Mr. Thornburg is a Registered Patent Attorney with extensive experience in the areas of patent, trademark, trade dress, trade secret, and unfair competition related litigation, enforcement and defense. Robert manages the Miami office of Allen Dyer Doppelt Milbrath & Gilchrist P.A., Florida's largest intellectual property law firm having six strategic offices throughout the State.

Robert's law office provides the best of both worlds, the strength and experience of a large multi-faceted intellectual property law firm, with the hands on attention, cost-effectiveness and personalized touch of a smaller law practice.

Intellectual Property Litigation Experience

Recent examples of Robert's intellectual property litigation experience includes:

• November 2012: Settlement agreement on behalf of a Miami based insurance company which included a covenant not to sue and general release, after filing a declaratory action sounding in non-infringement after that company received a cease and desist letter from a New England based editorial agency.
• November 2012: Successful defense of a publicly traded Miami nutraceutical company sued for trademark infringement by a Colorado competitor which resulted in a covenant not to sue and agreement to drop a related opposition proceeding in the U.S. Trademark Office.
• October 2012: Successful domain name transfer of five infringing domains through the ICANN protocol on behalf of an Idaho based clandestine drug laboratory remediation service network.
• September 2012: A finding of no damages, no infringement, and no injunction after a three week jury trial in Miami Federal Court on behalf a Sao Paulo, Brazil based energy drink manufacturer against a large San Diego based trademark holding and licensing group.
• July 2012: Favorable defense and later settlement on behalf of a large Delray Beach based addiction recovery and rehabilitation center accused of cybersquatting.
• May 2012: Served as a consulting expert in a month long trademark litigation trial on behalf of well known Manhattan and South Beach located Chinese restaurant – helping to secure a jury verdict of non-infringement regarding the registered trademarks or a rival restaurant.
• March 2012: Negotiation of an agreed-to final order & settlement (which included a covenant not to sue) on behalf of a Venezuelan based car rental company who had filed a declaratory suit seeking a finding of non-infringement regarding a national U.S. based competitor.
• August 2011: Entry of a final judgment in the Southern District of Florida which included a permanent injunction baring use of a South Florida based triathlon training and retail fitness company's trademarks.
• June 2011: Successful denial of a motion to dismiss a complaint for trademark and copyright infringement based upon a well-known Los Angeles based children's reading DVD training program.
• October 2008: Order (after oral arguments) agreeing to transfer of a patent infringement suit from the Eastern District of New York to the Southern District of Florida on behalf of Ft Lauderdale base tool manufacturer.
• September 2007: Denial of a motion to transfer and/or dismiss a patent infringement suit from the Southern District of Florida to the District of Nebraska.
• Spring 2007: Successful settlement of the first ever enforcement lawsuit regarding an estate planning patent which relates to transfer non-qualified stock options through grantor retained annuity trusts (GRATs).

Role in South Florida's Business Community

In addition to his service with the Florida Bar, Mr. Thornburg is very involved in the South Florida business and creative communities. He is a past trustee of the Greater Miami Chamber of Commerce, where he served on the Technology & Bioscience Committee.

Robert also participates in BioFlorida's Southeast chapter activities to advance the field of biotechnology and life sciences in South Florida.

Mr. Thornburg serves as President Elect of the University of Florida Law Alumni Council.

Service as an Expert Witness

Robert has also been tapped as a testifying expert in complex patent infringement disputes – including in the recent West Palm Beach case Nature's Earth v. Planetwise in the Southern District of Florida.

He has also served as a consulting expert in multiple trademark infringement lawsuits, including the use and role of objective evidence as to the issues of secondary meaning and likelihood of consumer confusion. This includes Robert's role as a rebuttal trademark expert as to the development and use of trademark survey experts.

Speaking Experience

Mr. Thornburg is an active lecturer on topics relating to intellectual property and electronic discovery and has served as a visiting lecturer at the University of Florida College of Law, Florida State University College of Law, and the University of Notre Dame College of Engineering. He also has participated in various panels, including Thomson LegalWorks' 2006 A-Z Electronic Discovery in Miami. While in law school, he served as Vice-Chair of the Moot Court Board, Editor-in-Chief of the Journal of Technology Law & Policy, and President of the Florida Intellectual Property Law Association.

Recognition

South Florida Legal Guide, Up and Comer, Intellectual Property Law (2013-2016); Best Lawyers in America (2013-2017); Florida Super Lawyers (2009 – 2016); The Daily Business Review, Rising Stars (2013); Florida Trend Legal Elite, Up and Comers (2010 & 2012); 40 Under 40 Outstanding Attorneys of Miami-Dade County, 2009.

Publications

Mr. Thornburg has authored the following publications:

• Electronic Discovery in Florida, The Florida Bar Journal, Vol. 80, No. 9 (October 2006)
• Trade Secrets in the Digital Age, ABA SciTech Law Journal, Vol. 3, Issue 1 (May 2006)
• Trademark Survey Evidence: Review of Current Trends in the Ninth Circuit, 21 Santa Clara Comp. & High Tech. L. J. 715 (2005)
• Choice of Law in International Copyright: The Split of Authority Between the Second and Ninth Circuits Regarding Extraterritorial Application of the Copyright Act, 10 J. Tech. L. &Pol'y 23 (2005)
• L.L.M. Dissertation, Trademark Surveys: Development of Computer Based Survey Methods, 3 J. Marshall Rev. Intellectual P. L. (2004)
• Stadium Naming Rights: An Assessment of the Contract and Trademark Issues Inherent to Both Professional and Collegiate Stadiums, 2 VA. Sports &Ent. L.J. 328 (2003)
• Florida Privacy Law: Application of Intentional Tort Principles and Florida's Right to Privacy as Safeguards to Private Dissemination of Private Information, 4 Fla. Coastal L.J. 139 (2003)
• The Impact of Copyright Law on Distance Education Programs: How Fair Use and the CONFU Guidelines May Shape the Future of Academia, 27 S. Ill U.L.J. 321 (2003)

Representative Patent Filings

• Vertical Positioning Shower Attachment — Assignee: Elimo International LLC, Miami, Florida. Inventor: Edgar Lehrer Bronstein, Caracas, Venezuela. Publication Date: September 22, 2011. Application No: 12/895,214.
• Gel-Based Phenergan Composition — Inventor: Delmer H. Parish, Naples, Florida. Publication Date: August 11, 2011. Filing Date: February 9, 2010. Application No: 12/702,814.
• Shower Attachment and Related Method (WIPO / PCT) — Applicant: Elimo International LLC, Miami, Florida. Inventor: Edgar Lehrer Bronstein, Caracas, Venezuela. Publication Date: September 22, 2011. Application No: PCT/US2010/032363.
• Privacy Bed Shade — Inventor: Amy & Cecil Sewell, Sarasota, Florida. Publication Date: August 4, 2011. Filing Date: January 5, 2011. Application No: 12/984,643.
• Multi-Card Display Holder for Windshields — Assignee: Park 'N Display LLC, Miami Beach, Florida. Inventor: John David Gardiner, Miami Beach, Florida. Publication Date: June 30, 2011. Filing Date: February 22, 2010. Application No: 12/709,808.
• Compression Undergarment for Relief of Menstrual Pain — Assignee: Embrace LLC of Sarasota. Inventor: Stephen D. Lee, Robert Brady et al. Publication Date: February 24, 2011. Filing Date: October 6, 2010. Application No: 12/898,996.
• Self-Cleansing Automated Shower — Assignee: Elimo International LLC, Miami, Florida. Inventor: Edgar Lehrer Bronstein, Caracas, Venezuela. Publication Date: September 22, 2011. Filing Date: June 30, 2010. Application No: 12/827,721.
• Gas Powered Self-Contained Portable Winch — Assignee: Wizard Products LLC, Naples, Florida. Inventor: M. Andrew Morrison et al. Publication Date: September 8, 2011. Filing Date: March 8, 2010. Application No: 12/719,579.
• Adjustable Nasal Prong and Headgear Assembly — Assignee: Respcare, Inc., Coconut Creek, Florida. Inventor: Javier Collazo, et al., Pompano Beach, Florida. Publication Date: September 29, 2011. Filing Date: March 25, 2010. Application No: 12/731,803.
• Method and Apparatus to Relieve Menstrual Pain (CIP1) — Assignee: Embrace LLC of Sarasota, Florida. Inventor: Stephen D. Lee, Robert Brady, et al. Publication Date: January 20, 2011. Filing Date: June 28, 2010. Application No: 12/824,789.