Robert J. Rando

Overview

Robert Rando is a partner in the Intellectual Property, Litigation and Entertainment & Sports practice groups at Greenspoon Marder LLP. He concentrates his practice in the areas of intellectual property and complex commercial litigation. With more than three decades of experience, he has handled a wide range of technology matters, including computer hardware and software, biotechnology products, medical devices, silicon chip manufacturing, chemical compounds, food additives, pharmaceuticals, communications, alternative energy products, consumer electronics, security, internet, and e-commerce.

Mr. Rando has substantial experience in federal civil litigation. He has been lead counsel in numerous cases in the Southern District of New York (SDNY), the Eastern District of New York (EDNY), and several other United States District Courts across the country. He also has a history of handling litigation matters that include complex commercial litigation, antitrust, class actions, civil rights, employment disputes, employment discrimination, ERISA cases, and product liability.

Mr. Rando has extensive appellate court experience, including having served as counsel of record or co-counsel on numerous Amicus brief filings before the United States Supreme Court and Federal Circuit on various intellectual property, constitutional and administrative law issues from 2006 to the present. A skilled trial lawyer and legal scholar, he has filed Amicus briefs in most of the high-profile patent and other intellectual property cases before the United States Supreme Court since, and including in, eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006). Most recently, Mr. Rando filed an Amicus brief, on behalf of amici curiae United States Senator Thom Tillis, Honorable Paul R. Michel, and Honorable David J. Kappos in American Axle & Manuf., Inc. v. Neapco Holdings LLC, et al., No. 20-891, U.S. Sup. Ct. (March 1, 2021).

Throughout his career, Mr. Rando has also been involved in different areas of alternative dispute resolution. He has engaged in mediation on behalf of his clients and has served as a Mediator in several private mediations. He is also a Fellow of the Academy of Court-Appointed Masters and has served by judicial appointment as a Special Master in numerous cases involving complex patent law issues. Additionally, Mr. Rando serves as a Neutral in patent and non-patent cases.

For several years, Mr. Rando has worked closely with the United States Patent and Trademark Office leaders and actively engages in federal judiciary matters. Along with other Federal Bar Association (FBA) patent practitioners, he developed and conducted a series of lectures in 2012 on the America Invents Act (AIA), and along with other New York Intellectual Property Law Association (NYIPLA) patent practitioners, he provided a lecture on Alice/Mayo/Section 101 patent eligibility issues in 2018, for the SDNY and EDNY Patent Pilot Program Judges, Magistrate Judges, and Law Clerks. He also represented the NYIPLA and FBA at the Tillis/Coons Section 101 Patent Law Reform Roundtable discussions and submitted written testimony included in the record at the June 11, 2019, hearing.

What’s more, Mr. Rando is a member of the EDNY Litigation Advisory Committee since 2005 and has worked alongside members of the judiciary, academia, and other lawyers reviewing and providing input and commentary on proposed rules changes to the Federal Rules and the EDNY local rules. He also served as a member of the joint EDNY/SDNY Rules Sub-Committee on Local Patent Rules.

Mr. Rando is also a published author and frequent lecturer at law schools, bar associations, CLE programs, and trade groups on constitutional law, administrative law, patent law, and other IP law issues. Throughout his teaching, Mr. Rando conducted a series of lectures to update the SDNY, EDNY Patent Pilot Program Judges, Magistrates, and Law Clerks on the America Invents Act.

Prior to joining Greenspoon Marder, Mr. Rando founded and led his own firm for nearly 25 years. He began his legal career as an associate with Skadden, Arps, Slate, Meagher & Flom, and later moved to patent firms of Kenyon & Kenyon and Hopgood, Calimafde, Kalil & Judlowe. Before attending law school, he served as a Systems Analysis Engineer at Sperry Corporation, now a part of Lockheed Martin. In this role, Mr. Rando helped design, develop, implement, and analyze computer software that could use advanced mathematics as part of nuclear submarine navigation and weapons systems under a government required security clearance.

Mr. Rando received his Juris Doctor, with academic honors, from St. John’s University School of Law. He was the Executive Publications Editor of the St. John’s Law Review and the recipient of an Academic Scholarship, Civil Trial Institute Honors, and the American Jurisprudence Award for Excellence in Constitutional Law. He received his Bachelor of Science, with academic honors, in mathematics and computer science, from Hofstra University.

Court Admissions

U.S. Supreme Court
U.S. Court of Appeals for the Second Circuit
U.S. Court of Appeals for the Federal Circuit
U.S. Court of Appeals for the Armed Forces
U.S. District Court for the Southern District of New York
U.S. District Court for the Eastern District of New York
U.S. Court of International Trade
U.S. Court of Federal Claims

Bar Admissions

New York

Education

J.D., St. John’s University School of Law, with honors, 1989
B.S., Hofstra University, with honors, 1983

Experience

Representative Experience

Rando has served as counsel of record or co-counsel on numerous Amicus brief filings before the United States Supreme Court and Federal Circuit on various intellectual property, constitutional and administrative law issues from 2006 to the present, including on the following:

Co-Counsel on Amicus Brief filed in Amgen Inc., et al., v. Sanofi, et al., No. 21-757, U.S. Sup. Ct. (January 3, 2023).
Counsel of Record on Amicus Brief filed in American Axle & Manuf., Inc. v. Neapco Holdings LLC, et al., 20-891, U.S. Sup. Ct. (March 1, 2021).
Co-Counsel on Amicus Brief filed in Minerva Surgical, Inc. v. Hologic, Inc., Cytyc Surgical Products, LLC, No. 20-440, U.S. Sup. Ct. (February 25, 2021).
Co-Counsel on Amicus Brief filed in American Axle & Manuf., Inc. v. Neapco Holdings LLC, et al., 20-891, U.S. Sup. Ct. (January 25, 2021).
Co-Counsel on Amicus Brief filed in United States of America v. Arthrex, Inc., et al. & Polaris Innovations Limited, v. Kingston Technology Company, Inc., et al., No. 19-1434, No. 19-1459, U.S. Sup. Ct. (July 29, 2020).
Co-Counsel on Amicus Brief filed in Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, No. 19-430, U.S. Sup. Ct. (October 18, 2019).
Co-Counsel on Amicus Brief filed in Thryv, Inc. v. Click-to-Call Technologies, LP, No. 18-916, U.S. Sup. Ct. (October 18, 2019).
Co-Counsel on Amicus Brief filed in Peter v. Nantkwest, Inc., No. 18-801, U.S. Sup.Ct. (July 22, 2019).
Co-Counsel on Amicus Brief filed in com v. United States Patent &Trademark Office, No. 18-1309, U.S. Sup. Ct. (May 16, 2019).
Co-Counsel on Amicus Brief filed in Andrei Iancu v. Erik Brunetti, No.18-302, U.S. Sup. Ct. (February 26, 2019).
Co-Counsel on Amicus Brief filed in Return Mail, Inc. v. United States Postal Service, 17-1616, U.S. Sup. Ct. (December 17, 2018).
Co-Counsel on Amicus Brief filed in RPX Corporation, v. ChanBond LLC, No. 17-1686, U.S. Sup. Ct. (July 20, 2018).
Co-Counsel on Amicus Brief filed in Regeneron Pharmaceuticals, Inc. v. Merus N.V., No. 17-1616, U.S. Sup. Ct. (June 29, 2018).
Co-Counsel on Amicus Brief filed in Western Geco LLC v. ION Geophysical Corporation, No. 16-1011., U.S. Sup. Ct. (February 27, 2018).
Counsel of Record on Amicus brief filed in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, No. 16-712, U.S. Sup. Ct. (August 31, 2017).
Co-Counsel on Amicus Brief filed in Impression Products Inc. v. Lexmark International Inc., No. 15-1189, U.S. Sup. Ct. (February 22, 2017).
Co-Counsel on Amicus brief filed in Lee v. Tam, No. 15-1293, U.S. Sup. Ct. (November 21, 2016).
Co-Counsel on Amicus brief filed in Life Technologies v. Promega, No. 14-1538, U.S. Sup. Ct. (October 25, 2016).
Co-Counsel on Amicus brief filed in MCM Portfolio LLC v. Hewlett-Packard Co., No. 15-1330, U.S. Sup. Ct. (May 31, 2016).
Co-Counsel on Amicus brief filed in Sequenom, Inc., v. Ariosa Diagnostics, Inc., No. 15-1182, U.S. Sup. Ct. (April 19, 2016).
Co-Counsel on Amicus brief filed in Federal Trade Commission v. Actavis, Inc., 133 S. Ct. 2223 (June 17, 2013).
Counsel of Record on Amicus brief filed in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).
Co-Counsel on Amicus Brief filed in Ericsson, Inc., Telefonaktiebolaget LM Ericsson, v. Samsung Electronics Co., LTD., Samsung Electronics America, Inc., Samsung Research America, No. 2021-1565, Fed. Cir. (April 9, 2021).
Co-Counsel on Amicus Brief filed in Arthrex, Inc., v. Smith & Nephew, Inc., No. 2018-2140, Fed. Cir. (December 30, 2019).
Co-Counsel on Amicus Brief filed in Nantkwest, Inc. v. Matal, et al., 2016-1794, Fed. Cir. (en banc) (January 23, 2018).
Co-Counsel on Amicus Brief filed in Regeneron Pharmaceuticals, Inc. v. Merus N.V., No. 2016-1346, Fed. Cir. (en banc) (September 26, 2017).
Co-Counsel on Amicus Brief filed in Wi-Fi One, LLC v. Broadcom Corporation., 2015-1944, Fed. Cir. (en banc) (February 2017)

Professional and Community Involvement

EDNY Litigation Advisory Committee, Member, 2005 – present
Academy of Court Appointed Masters, Fellow, 2014 – present
Association of Amicus Counsel, Founding Member, 2017 – present
Honorable William C. Conner Inn of Court, Master, 2012 – present
Federal Bar Association (“FBA”), Member, 2005 – present
- FBA Government Relations Committee, Member, 2010 – 2019
- FBA Intellectual Property Law Section, Chair, 2015 – 2018
- FBA Intellectual Property Law Section, Board Member, 2015 – present

FBA EDNY Chapter, Founding Member, 2005
- President, 2008 – 2010
- National Delegate, 2011 – 2012
- Board Member, 2005 – present

New York Intellectual Property Law Association (“NYIPLA”), Member, 1990 – present
- President, 2023 – 2024
- President Elect, 2022 – 2023
- First Vice President, 2021 – 2022
- Second Vice President, 2020 – 2021
- Treasurer, 2015 – 2018
- Board Member, 2015 – present
- Programs Committee, Board Liaison, 2015 – 2016
- Programs Committee, Co-Chair, 2011 – 2015
- Amicus Curiae Committee, Member, 2004 – present
- Patent Litigation Committee, Member, 2004 – 2018
- Legislative Action Committee, Member, 2018 – present
- PTAB Committee, Board Liaison, 2020 – present
- PTAB Committee, Member, 2019 – present

The Federalist Society, Member, 2017 – present
- Intellectual Property Practice Group Executive Committee, Member, 2019 – present
John’s University School of Law, Guest Lecturer
John’s University School of Law, Moot Court and Mock Trial Judge
Hofstra University School of Law, Guest Lecturer
Hofstra University School of Law, Moot Court Judge
Touro Law Center, Guest Lecturer
Our Lady of Mercy Academy, Syosset, NY, Mock Trial Program Founder & Mentor
New York State Bar Association, Moot Court and Mock Trial Mentor
Kings Park High School, Kings Park, NY, Moot Court Mentor

Speaking Engagements

Featured Speaker, “Diverse Careers in IP Program,” New York Intellectual Property Law Association (NYIPLA), March 28, 2024
Featured Speaker, “Meeting the Data Demands of Litigation,” ALM Legal Week, January 30, 2024
Featured Speaker, “OpenSky Industries, LLC. v. VLSI Technology LLC – Fall-out from abusing the IPR process,” JPPCLE, September 7, 2023
Featured Speaker, “Courthouse Steps Decision: Amgen Inc. v. Sanofi,” The Federalist Society, May 23, 2023
“The Supreme Court’s Amgen V. Sanofi Case: Waving a Wand at Enablement,” Licensing Executives Society, May 3, 2023
Featured Speaker, “Courthouse Steps Oral Argument: Amgen Inc. v. Sanofi,” The Federalist Society, March 28, 2023
“A Seat at the Sitting,” The Federalist Society, March 2023
“Hot Topics for Congress and the USPTO: 101 Patent Eligibility and PTAB Director Review,” New York Intellectual Property Law Association Amicus Brief Committee, September 14, 2022
“A SCOTUS Review of IP Cases in the Recent 2020 Term and its Implications for Constitutional Jurisprudence in Other Areas of Law” Federal Bar Association CLE Webinar, August 25, 2021
“The Injunction Presumption: Revisiting eBay v. MercExchange,” The Federalist Society, February 4, 2021
“IP Policy Issues for the New Congress,” New York Patent Law Association Annual Patent Law CLE Program, November 17, 2020
“Careers in Intellectual Property,” Touro Law Center, October 28, 2020
“Diverse Careers in IP Law,” New York Patent Law Association and Hofstra Maurice A. Deane School of Law, October 13, 2020
“Post-Decision SCOTUScast: Thryv, Inc. v. Click-to-Call Technologies, LP,” The Federalist Society, February 24, 2020
“Cutting Edge Developments at the Intersection of Bankruptcy and Intellectual Property Law,” Federal Bar Association, February 19, 2020
“35 U.S.C. Section 101 Alice/Mayo Update,” Association of Amicus Counsel Presentation for Japanese External Trade Organization, January 24, 2020
“Post-Decision SCOTUScast: Peter v. NantKwest Inc.,” The Federalist Society, January 22, 2020
“Courthouse Steps Decision Teleforum: Peter v. NantKwest Inc.,” The Federalist Society, December 16, 2019
“Courthouse Steps Oral Argument Teleforum: Thryv, Inc. v. Click-to-Call Technologies, LP,” The Federalist Society, December 12, 2019
“Presidents’ Forum: Section 230 Online Platform Liability,” New York Intellectual Property Law Association, December 5, 2019
“Diverse Careers in IP Law and Strategies for Achieving Success,” New York Intellectual Property Law Assocation and St. John’s University School of Law, October 23, 2019
“Post-Argument SCOTUScast: Peter v. NantKwest Inc.,” The Federalist Society, October 22, 2019
“Career Kickstart Panel,” Federal Bar Assocation and St. John’s University School of Law, October 21, 2019
“Courthouse Steps Oral Argument Teleforum: Peter v. NantKwest Inc.,” The Federalist Society, October 11, 2019
“Sixth Annual Summer Associate Second Circuit Moot Court Argument CLE: TC Heartland Decision & Alice/Mayo Framework,” New York Intellectual Property Law Association, July 9, 2019
“PTAB Estoppel, Post-SAS: Perspectives from the PTAB Chief Judge and Practitioners,” New York Intellectual Property Law Assocation, May 14, 2019
“Tenth Annual Art Litigation and Dispute Practice Institute: Design Patents and Women Lawyers,” New York County Lawyers Association, October 19, 2018
“Fifth Annual Summer Associate Second Circuit Moot Court Argument CLE: Empire Distribution Inc. v. Twentieth Century Fox Television” New York Intellectual Property Law Association, July 11, 2018
“SCOTUS Review: Redefining Administrative Second Looks at Patents,” New York Intellectual Property Law Association, May 15, 2018
“Hot Topics in Patent Litigation: NantKwest Inc. v. Matal,” 34th Annual Joint Patent Practice CLE Seminar, May 2, 2018
“Judicial Workshop for SDNY Judges and Law Clerks: Best Practices for Applying Mayo and Alice,” New York Intellectual Property Law Association, February 15, 2018
“Patent Rights: Public or Private; Whose Thoughts and Ideas Are They Anyway?,” New York Intellectual Property Law Association Annual Patent Law CLE Program, November 16, 2017
“Diverse Careers in IP Law and Strategies for Achieving Success,” New York Intellectual Property Law Association and Hofstra Maurice A. Deane School of Law, October 4, 2017
“Enforcing or Defending Your Rights: Patents and Trademarks,” USPTO Invention-Con 2017, August 12, 2017
“Fourth Annual Summer Associate Second Circuit Moot Court Argument CLE,” New York Intellectual Property Law Association, July 18, 2017
Legal Update: Current Developments In Patent Issues In The Supreme Court, Federal Circuit and PTAB,” New York Intellectual Property Law Association Annual Patent Law CLE Program, November 17, 2016
“The Impact of Recent SCOTUS, CAFC and PTAB Decisions and Patent Law Reforms on: Patent Litigators, In-House General and Patent Counsel, and the Judiciary,” Federal Bar Association National Annual Meeting and Convention, September 16, 2016
“Third Annual Summer Associate Second Circuit Moot Court Argument CLE,” New York Intellectual Property Law Association, July 12, 2016
“Antonin Scalia, An American Jurisprudential Legacy: Justice Scalia’ Legacy in Intellectual Property Cases,” Touro Law Center, April 20, 2016
“USPTO Patent Quality Overview,” USPTO, Fordham IP Institute and New York Intellectual Property Law Association, July 29, 2015
“Second Annual Summer Associate Second Circuit Moot Court Argument CLE,” New York Intellectual Property Law Association, July 16, 2015
“Recent IP Law Case Law changes And Legislative/Administrative Reforms,” LISTnet, LIFT, and New York Intellectual Property Law Association, April 23, 2015
“The Rapidly Changing Patent Law Landscape, What Entrepreneurs, Investors, Inventors, Lawyers and Judges Need To Know: Mastering Patent Claim Construction From The Perspective Of A Patent Special Master,” NDNY Intellectual Property Inn of Court, April 15, 2015
“SCOTUS Update: Recent Intellectual Property Case Reviews,” Federal Bar Association SDNY Chapter, March 18, 2015
“Inaugural Summer Associate Second Circuit Moot Court Argument CLE: Federal Trade Commission v. Actavis, Inc.,133 S. Ct. 2223 (2013),” New York Intellectual Property Law Association, July 24, 2014
“District Judges Panel: Judicial Insights into Patent Infringement Litigation,” Licensing Executives Society 2014 Mid-Year Meeting, March 27, 2014

Awards

Recognitions

U.S. News & World Report, “Best Lawyers in America,” Patent Law, 2023-2024
Super Lawyers magazine, “New York Super Lawyers,” Intellectual Property, 2021-2023

Publications

Quoted, “USPTO, Car Cos., Profs Tell Fed. Circ. About Design Patents,” Law360, August 29, 2023
Quoted, “File for Patent Before Publicly Displaying Tech, Attorneys Warn,” Bloomberg Law, February 22, 2023
Quoted, “Crypto firm’s $350m patent suit could just be the start,” WIPR, January 12, 2023
Quoted, “Patent Cases To Watch In 2023,” Law360, January 2, 2023
Quoted, “Are Winds Of Change Finally Blowing On Patent Eligibility?” Law360, December 21, 2022
Quoted, “IP Attys Urge Justices To Adopt Broad Atty-Client Privilege,” Law360, November 18, 2022
Quoted, “Ruling May Spur New Patent Venue Rows Over Remote Work,” Law360, November 3, 2022.
Quoted, “Fed Circuit affirms IBM display patents as ‘abstract,” WIPR, October 20, 2022
“Oil States Energy Services, LLC v. Greene’s Energy Group, LLC: Patent Rights, Public or Private and Whose Thoughts and Ideas are They Anyway?,” The Report, August 31, 2017
“Attorney Admissions: Identifying and Working with Local Counsel and Pro Hac Vice Admissions,” The Federal Lawyer, September 15, 2016
“America’s Need For Strong, Stable and Sound Intellectual Property Protection and Policies: Why It Really Matters,” The Federal Lawyer, July 15, 2016
“Mastering Patent Claim Construction In The Brave New Patent World: A Patent Special Master’s Perspective,” The Federal Lawyer, January 15, 2015
“Mastering Patent Claim Construction: A Special Master’s Perspective,” Touro Law Review, October 6, 2014
“Sequestration Budget Cuts: The (Not So) Good The Bad And The Ugly,” Federal Bar Association Litigation Section SideBAR, January 1, 2014

Nov 20, 2023 Patent Law: As The Bee Gees said, “It’s only words, and words are all I have to take your heart away”

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