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  • How Not To Create an International Incident: U.S. and Canadian Perspectives on Counsel-to-Counsel and Counsel-to-Court Duties in Practicing Entity Litigation and Troll Litigation
    AIPLA 2017 Electronic and Computer Patent Law Summit (Toronto, Ontario, Canada)
    June 21, 2017
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Frank A. Bruno Partner

Co-Chair, Intellectual Property Group
Philadelphia, PA | Direct 215.864.6225 | Fax 215.789.7568
brunof@whiteandwilliams.com
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Frank Bruno is a technology lawyer who focuses on patent law and has considerable experience in electrical and computer technologies including hardware, software, and telecommunications.

Frank is a first-chair patent litigator and has represented patent-holders and defendants in cases involving software, semiconductor designs and methods of manufacture, digital telephony, image compression, and global positioning systems. In addition to his work in federal district courts, he has also successfully represented parties in utility and design patent infringement disputes mediated by Amazon.com.

He has drafted and negotiated patent and software licenses and has represented buyers, sellers, and lenders in corporate transactions, such as acquisitions and financings, where intellectual property was a significant asset.

As a lawyer registered to practice before the U.S. Patent and Trademark Office, Frank has prosecuted patent applications covering a variety of technologies including computer hardware and software, biomedical devices, and vehicle barriers. He has written opinions on patent validity and infringement in matters relating to cellular RF chips, digital storage technology, and consumer electronics.

Frank has represented companies and lectured on best practices for drafting and implementing terms of service and privacy policies. Frank has assisted clients that have experienced privacy breaches, investigating the breach and following breach response protocols.

Representative Matters

  • Won landmark award of attorneys’ fees against patent troll and its attorneys in a patent infringement case for client Gust, Inc. after having litigation transferred from Eastern District of Texas to Southern District of New York

  • Drafted Privacy Policy and Terms of Service for ORGANIZE.ORG, a non-profit dedicated to increasing organ donation
  •  Represented CSR Prof. Serv. Inc. in connection with data privacy and security inventions before the USPTO
  • Represented plaintiff and patent holder, Pactiv, as first chair and lead trial counsel in patent infringement case involving use of oxygen absorbers in modified atmosphere meat packaging technology
  • Represented defendant, Brother International Corp., as first chair and lead trial counsel in patent infringement case involving user interface technology, which required the coordination of the Joint Defense Group and subcommittee meetings with over 45 codefendents as well as participation in non-infringement and invalidity analysis and settlement negotiations
  • Achieved favorable settlement for Universal Safety Response Inc., (USR) as first chair and lead trial counsel in a patent, trademark, and copyright infringement action
  • Represented patent-owner Trimble Navigation in a patent infringement case involving GPS devices
  • Obtained declaratory judgment for plaintiff, ESS Technology, Inc., as lead technical attorney, in a patent infringement case involving digital telephone and modem technology
  • Represented defendant, Plus Vision, in a patent infringement case involving digital imaging and LCD products
  • Represented defendant, Fujitsu Computer Products of America, Inc., as lead technical attorney in a multi-defendant, multidistrict patent infringement case involving digital image compression
  • Obtained declaratory judgment for plaintiff, Fujitsu Network Communications, in a patent infringement case involving digital telephony
  • Represented patent owner, Fujitsu Ltd. and Fujitsu Microelectronics America, Inc., as lead technical attorney in a patent case involving semiconductor design and methods of manufacture
  • Represented complainant, Renesas, in a section 337 patent action before the U.S. International Trade Commission
  • Negotiated a favorable settlement for defendant, Personal Communication Devices, LLC – a reseller of cellular phones – in a multi-defendant patent infringement action brought by a non-practicing entity where the patents at issue related to MMS cellular messaging technology
  • Negotiated a favorable settlement for defendant, Personal Communication Devices, LLC – a reseller of cellular phones – in a multi-defendant patent infringement action brought by a non-practicing entity where the patents at issue related to taking and storing photographs using mobile devices
  • Negotiated a favorable settlement for defendant, Personal Communication Devices, LLC – a reseller of cellular phones – in a multi-defendant patent infringement action brought by a non-practicing entity where the patents at issue related to QPSK modulation in CDMA communication networks
  • Negotiated a favorable settlement for defendant Personal Communication Devices, LLC – a reseller of cellular phones – in a multi-defendant patent infringement action brought by a non-practicing entity where the patents at issue related to monitoring data traffic transmission rates over cellular communication channels
  • Negotiated a favorable settlement for defendant, Personal Communication Devices, LLC – a reseller of cellular phones – in a multi-defendant patent infringement action brought by a non-practicing entity where the patents at issue related to cellular antenna technology
  • Represented defendant, Personal Communication Devices, LLC – a reseller of cellular phones – in a multi-defendant patent infringement action brought by a non-practicing entity where the patents at issue related to channel hopping in wireless communication networks
  • Represented defendant, PulsePointe, as first chair and lead trial counsel in a patent infringement case involving email technology
  • Represented defendant, Moat Inc., as first chair and lead trial counsel in a patent infringement case involving advertising software monitoring technology
  • Represented major manufacturer of food packaging equipment in several patent reexamination proceedings before the USPTO resulting in successful invalidation of the patents asserted against our client
  • Counseled and sought patent protection for several food companies, including performing prior art reviews of patent landscape and drafting patent applications covering food formulations and methods of manufacture           
      

Recognition & Involvement

Frank has been selected by his peers for inclusion in The Best Lawyers of America list each year since 2016 in the practice area of Patent Law. In 2014 and 2015, he was named a Pennsylvania "Super Lawyer" by Super Lawyers. Frank is also rated AV Preeminent™ by the Martindale-Hubbell peer review rating system.

Events

  • How Not To Create an International Incident: U.S. and Canadian Perspectives on Counsel-to-Counsel and Counsel-to-Court Duties in Practicing Entity Litigation and Troll Litigation
    AIPLA 2017 Electronic and Computer Patent Law Summit (Toronto, Ontario, Canada)
    June 21, 2017
  • In-House Counsel's Guide to Patents
    Lawline Webinar
    May 25, 2017
  • Managing Risk in International Contracting and Transactions
    Global Business Conference: Navigating Trade in the New Environment (Atlantic City, NJ)
    April 27, 2017
  • An In-House Counsel's Guide to Patents
    Lawline.com
    July 1, 2014
  • Safeguarding Your Exports
    Federal Reserve Bank, Philadelphia, PA
    April 30, 2013
  • Patent Law - Trolls 101
    Pennsylvania Bar Institute (Philadelphia, PA)
    November 10, 2011
  • The Business of Intellectual Property: Trends and Predictions
    April 6, 2011

Publications

  • Supreme Court Limits Venue in Patent Cases in TC Heartland
    Intellectual Property Alert
    May 23, 2017
  • Intellectual Property Roundtable: Issues Facing Practitioners Today
    The Legal Intelligencer
    February 2014
  • Clients Benefit from Early Action in Response to Patent Infringement Notice Letters
    Intellectual Property Alert
    April 8, 2013
  • Norman IP v. Lexmark: Post AIA Joinder and the Rule 42 Trump Card
    Gibbons Law IP Law Alert
    August 28, 2012
  • USPTO Offers IP Awareness Assessment
    Gibbons Law IP Law Alert
    June 11, 2012
  • Recent Impact of Reexams on Stays in E.D. Texas
    Gibbons IP Law Alert
    May 15, 2012
  • One-E-Way Inc. v. Plantronics Inc.: Central District of California Court Finds Improper Joinder of Defendants
    Gibbons IP Law Alert
    February 7, 2012
  • The Patent Pilot Program Takes Off Around the Country
    Gibbons IP Law Alert
    October 20, 2011
  • Beware of Invention Promoter and Private IP Registration Service Scams
    Gibbons IP Law Alert
    August 9, 2011
  • Courts Continue to Grapple with False Marking Cases
    Gibbons IP Law Alert
    January 6, 2011
  • Duty of Disclosure: Applicant's Contradictory Statements to EPO and USPTO Support Finding of Inequitable Conduct
    Gibbons IP Law Alert
    February 12, 2010
  • USPTO and Practitioners Discuss Disclosures from Similar Applications
    Gibbons IP Law Alert
    January 6, 2010
  • IP to IPO
    The Deal
    September 15, 2008
  • Zoltek Revisited: Patent Infringement Between Private Parties Does Not Govern Liability for Federal Government's Use of a Patent
    Intellectual Property Today
    July 2008

Practice areas

Bar and Court Admissions

Pennsylvania

New Jersey

New York

U.S. Court of Appeals for the Federal Circuit

U.S. District Court for the Eastern District of New York

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

U.S. District Court for the Southern District of New York

U.S. District Court for the Western District of New York

U.S. Patent and Trademark Office (Reg. No. 46,583)

Education

Villanova University School of Law, JD, 1999

Johns Hopkins University, BSEE, 1996

Memberships

American Intellectual Property Law Association

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