Paul is a nationally-recognized expert in patent mediation. His qualifications and experience include the following:
- Mediation and Arbitration Panelist, American Arbitration Association, 2004-present;
- Mediation and Arbitration Panelist, International Center for Conflict Prevention and Resolution (CPR), 2008-present;
- Mediation and Arbitration Panelist, Silicon Valley Arbitration and Mediation Center’s Tech List, which lists highly experienced patent mediators;
- American Intellectual Property Law Association’s List of Mediators and Arbitrators, which lists highly experienced patent mediators;
- Adjunct Professor of Law at the U.S. News No. 1 ranked dispute resolution program in the country, Pepperdine University School of Law’s Straus Institute for Dispute Resolution teaching patent mediation in “Selected Issues in Dispute Resolution: Intellectual Property Disputes,” 2008-present;
- Vice-Chair, ADR Committee, American Intellectual Property Law Association;
- Co-author, “Patent Mediation Best Practices,” The Sedona Conference, 2017;
- Author and Speaker, “Cutting Edge Issues in Mediation Ethics: Mediation Confidentiality and Privilege in Patent Cases,” AIPLA Annual Meeting, 2017;
- Quoted in patent mediation article in the Daily Journal, 2017;
- Taught patent litigation course at top-30 ranked law school 2005-2015;
- Admitted to practice before the U.S. Patent and Trademark Office;
- Best Lawyers in America, Patent Litigation and Patent Law, 2007-2019;
- Chapter Chair, Licensing Executives Society of the USA and Canada, 2005-present.
Paul has over 20 years of experience handling complex patent litigation and transactions as lead counsel, co-counsel, arbitrator and mediator, with experience in the following subject matter:
- computer hardware, software, databases, cloud computing, information technology, licensing, artificial intelligence (AI), blockchain, bitcoin and other cryptocurrency;
- life sciences (including medical and dental devices, biotechnology, genomics, proteinomics, biologics, and pharmaceuticals);
- chemical engineering;
- mechanical engineering;
- electrical engineering;
- semiconductor processing;
- telecommunications; and
- Internet-based inventions and business methods.
The following is a representative sample of patent cases in which Paul has served as an arbitrator or mediator:
- patent infringement dispute involving 7 patents and over 40 products between U.S. and China consumer product manufacturers with claims for over $35 million, royalties and injunctive relief;
- patent infringement and false advertising dispute involving cybersecurity and data privacy software providers;
- patent license dispute between robotic surgical device provider and India-based licensee involving injunctive relief and multimillion dollar claims;
- patent infringement and trade secret misappropriation dispute between German and American manufacturers regarding sound technology;
- patent infringement dispute between industry-leading inventor and Fortune 100 paper manufacturing company in which plaintiff was seeking permanent injunctive relief that would have shut down portions of the company;
- patent ownership dispute regarding scanning technology patents between Fortune 1000 technology company and former employee;
- dispute involving allegations of legal malpractice in law firm’s representation of client in a patent infringement case.
Mediator Paul E. Burns, Esq.
c/o Procopio
633 West 5th Street, 26th Floor
Los Angeles, CA 90071
Tel: 310-990-3232
Email: paul.burns@procopio.com