Overview

Paul Franz assists clients of all sizes with obtaining patent protection for their intellectual property assets and strengthening the value of their patent portfolios.

Paul provides comprehensive patent counseling to businesses large and small, as well as inventors. With clients of all sizes, Paul maintains a diverse advisory practice. He helps startup companies develop patent portfolios and provides strategic guidance to larger companies on managing and monetizing their complex patent portfolios.

His clients also rely on him for noninfringement and invalidity analysis and opinions, due diligence investigations, licensing advice, and guidance on export controls issues.

Paul’s technology experience encompasses many electrical and mechanical engineering arts and software-related innovations, including:

  • Computer architecture, parallel computing, and operating systems
  • Virtual machines and machine learning
  • User interfaces and speech and handwriting recognition
  • Search engines
  • Application indexing
  • Cloud computing
  • Location-bases services
  • E-commerce
  • Databases
  • Advertising

Before practicing law, Paul was an electrical engineer for the U.S. Department of the Navy for eight years. During that time, he was involved in certification and testing of digital sonar systems and Tomahawk fire control systems. Paul is a licensed professional engineer in Washington.

Experience

NICE Systems, Inc. & NICE Systems, LTD. v. Witness Systems, Inc. Case No. 1:06-cv-00311 (D. Del) – Patent infringement action involving 10 patents related to call monitoring and recording systems.

Sony Corp., et al. v. Eastman Kodak Co., Civ. A. No. 04-CV-3193 (N.J. 2004) – Patent infringement action involving 24 patents for film cameras and photographic film processing.

Hand Held Products, Inc., et al. v. Symbol Technologies, Inc., et al., Civ. A. No. 04-3 (E.D. Va. 2004) – Patent infringement action on four patents for scanners and imaging; settlement reached after successfully dismissing patents out of Delaware and defeating a motion to transfer from Virginia.

Symbol Technologies, Inc., et al. v. Hand Held Product, Inc., et al., Civ. A. No. 03-103 (SLR) (D. Del. 2003) – Patent infringement action on 12 patents and declaratory judgment on 36 other patents for scanners and imaging; settlement reached after successfully dismissing patents out of Delaware and defeating a motion to transfer from Virginia.

Technology Licensing Corp. v. Gennum Corp., No. 3:01-CV-4024-RS (N.D. Cal. 2002) – Patent infringement case on two patents related to video synchronization separators; successfully precluded damages expert from proffering testimony pursuant to Daubert motion.

Tanashin Denki Co., Ltd. v. Thomson Multimedia Inc., et al., IP99-C-0836-Y/K (S.D. Ind. 1999) – Patent infringement case involving five patents on cassette tape decks; jury verdict: patents valid and infringed.

Centillion Data Systems, Inc. v. Ameritech Corp., et al., IP98-C-1748 -Y/F (S.D. Ind. 1998) – Patent infringement action involving two patents on telecommunication billing; case administratively closed pending bankruptcy proceeding.