Overview

Brian S. Rosenbloom is an expert in Intellectual Property (IP) counseling, patent prosecution, and patent litigation proceedings before the U.S. Patent and Trademark Office (USPTO). He has over two decades of experience in the IP field and a strong technical background in the electrical and software arts. He counsels a broad range of clients, from Fortune 100 companies to independent inventors, entrepreneurs, and emerging enterprises. 

Brian is a gifted strategist who places a high value on communication with his clients. He keeps his clients consistently informed of the status of their matters and lays out decision points in clear, precise language, along with a recommended course of action. Brian protects his clients’ most valuable innovations, and secures their market value for years to come.

Brian’s strong technical background is a great asset to his work. Prior to attending law school, he received a Bachelor’s degree in Electrical Engineering, and worked as a software and computer-networking engineer at General Electric Information Services. In this role, he gained valuable expertise in computer networking, Internet protocols, and software development. Brian’s firsthand knowledge and experience in these technologies, coupled with his strategic thinking and excellent communication skills, are a major advantage for his clients. 

Brian’s practice is focused on preparing and prosecuting patent applications in a broad range of technologies, including telecommunications, wireless networking, Artificial Intelligence (Machine Learning), video and audio encoding, cloud computing, ad-serving, and other software applications. Reflecting his significant experience in the AI/ML space, Brian was appointed to the Artificial Intelligence/Machine Learning (AI/ML) Task Force of the American Bar Association Section of Intellectual Property Law (ABA-IPL) for the 2023-2024 bar year. This is his second year being appointed to the Task Force. Brian‘s patent prosecution work is informed by both his technical expertise and his strategic mindset.

Another substantial portion of Brian’s practice involves litigating patents. He litigates before the USPTO, including post-grant proceedings before the Patent Trial and Appeal Board (PTAB) and reexaminations. Brian also litigates matters in Federal Court. He has a track record of both invalidating bad patents (patents that the USPTO never should have issued in the first place) and asserting patents against infringers who seek to take his client’s market share.

Brian’s practice also includes patent portfolio development and management. He helps develop and manage diverse patent portfolios, ranging in size from dozens to hundreds of patents. When working with these clients, Brian begins with a strategic assessment. This includes an expert evaluation of where and when challenges are likely to arise. His approach balances risk and opportunity, while analyzing and responding to competitive portfolios.

Experience

U.S. Patent Trial and Appeal Board

Vudu, LLC v. Ideahub, Inc. IPR2020-01688 (Lead Counsel)

Vudu, LLC v. Ideahub, Inc. IPR2020-01689 (Lead Counsel)

TripAdvisor LLC v. Mimzi, LLC IPR2019-01080 (Lead Counsel)

Stingray Digital Group Inc. et al v. Music Choice IPR2018-00114

Stingray Digital Group Inc. et al v. Music Choice IPR2017-01450

Stingray Digital Group Inc. et al v. Music Choice IPR2017-01193

Stingray Digital Group Inc. et al v. Music Choice IPR2017-01192

Stingray Digital Group Inc. et al v. Music Choice IPR2017-01191

Stingray Digital Group Inc. et al v. Music Choice IPR2017-00888

SAP America v. Versata Development Group, Inc. CBM2012-00001

 Federal District Court Litigation Matters

Helios Streaming v. Vudu 1-19-cv-01792 (DDE)

DISH Technologies LLC et al v. Univision Communications Inc. 1-19-cv-00144 (DDE)

Bartonfalls LLC v. CBS Interactive, Inc. 2-16-cv-01129 (EDTX)

Two-Way Media Ltd. v. Comcast Cable Communications LLC et al 1-14-cv-01006 (DDE)

iMTX Strategic LLC v. Home Box Office Inc. 1-14-cv-00547 (DDE)

Preservation Technologies LLC v. New York Times Digital LLC 1-13-cv-01691  (DDE)

Martha Stewart Living Omnimedia, Inc. v. Lodsys Group, LLC 2-13-cv-01074 (EDWI)

Interface IP Holdings LLC v. NBC Universal Media LLC 1-13-cv-00838 (DDE)

Data Carriers LLC v Victoria's Secret Direct LLC. 1-13-cv-00798 (DDE)

Personal Audio, LLC v. CBS Corporation 2-13-cv-00270 (EDTX)

C4Cast.com, Inc. v. The New York Times Company 2-13-cv-00733 (EDTX)

Clouding IP LLC v. CNN et. al. 1-12-cv-01639 (DDE)

Data Carriers LLC v. Trip Advisor et. al. 1-12-cv-00951 (DDE)

The J.M. Smucker Company v. Lodsys LLC 2-12-cv-00012 (EDWI)

CyberFone Systems LLC v. CNN Interactive Group Inc. et al 1-11-cv-00829 (DDE)

Boadin Technology LLC v. MarketWatch Inc. 1-11-cv-00802 (DDE)

The New York Times Company v. Webvention Holdings LLC et al 1-11-cv-00634 (DDE)

Beneficial Innovations, Inc. v. Advance Publications, Inc., et. al. 2-11-cv-00229 (EDTX)

Wireless Ink Corporation v. Facebook, Inc. et al 1-11-cv-01751 (SDNY)

Illinois Computer Research LLC v. HarperCollins Publishers, Inc. et al 1-10-cv-09124 (SDNY)

Internet Coupon Solutions LLC v. Coupons.com Incorporated 6-09-cv-00261 (EDTX)

Beneficial Innovations v. The New York Times Co. 2-07-cv-00263 (EDTX)

Dow Jones & Company, Inc. v. Ablaise Ltd et al. 1-06-cv-01014 (DDC)

Cendant Publishing Inc. v. Amazon.com Inc. 1-05-CV-414 (DDE)

Internet Ad Systems, LLC v. ESPN, Inc., Travelocity.com Inc., and The New York Times Co.  3-03-cv-02787 (NDTX)

Fordham v. Onesoft Corporation, 1-00-cv-01078 (EDVA)

Honors & Recognitions

Intellectual Asset Management’s (IAM) Patent 1000 – The World’s Leading Patent Professionals (2021-2024)
Ranked for Prosecution in the D.C. Metro Area

Washington, D.C. Super Lawyers (2015-2024)

Newsroom

News

Speaking Engagements

D.C. Bar, Faculty Member, "Software Patent Primer" (2005-2008, 2010)

Community & Professional

American Bar Association (ABA)
Vice-Chair of the High Tech and Software Patent Committee
Appointee to the Artificial Intelligence/Machine Learning (AI/ML) Task Force of the Section of Intellectual Property Law (ABA-IPL) (2022-2024)

Education

J.D. Georgetown University Law Center (cum laude) 

B.S. Electrical Engineering, Columbia University (Tau Beta Pi Engineering Honor Society, Eta Kappa Nu Electrical Engineering Honor Society)

Bar & Court Admissions

Bar Admissions

  • District of Columbia

    Maryland

    Virginia

    U.S. Patent and Trademark Office

Court Admissions

  • U.S. Supreme Court

    U.S. Court of Appeals for the Federal Circuit

    U.S. District Court for the Eastern District of Virginia

    U.S. District Court for the District of Columbia
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