Robert W. Busby is a partner in Morgan Lewis's Intellectual Property Practice. Mr. Busby focuses his practice on intellectual property litigation and licensing negotiations. Earlier in his career, he prepared and prosecuted a wide range of patent applications (both as a patent agent and a lawyer) on semiconductor devices, nuclear instruments and reactor equipment, semiconductor fabrication methods, liquid crystal display (LCD) panels, cameras, printers, medical devices, microscopes, survey equipment, and laser rangefinders.
Mr. Busby has represented international clients in all aspects of district court litigation, including as the lead attorney in jury trials, bench trials, summary judgment hearings, and claim construction hearings and has been the lead attorney in ITC proceedings. He has conducted discovery throughout the world, taking and defending dozens of depositions in the U.S., Europe, Taiwan, and Japan. Mr. Busby has traveled extensively throughout Asia while working on numerous litigations and licensing negotiations. He is very familiar with eDiscovery procedures. Mr. Busby frequently lectures on various IP topics in Japan.
Mr. Busby frequently represents Japanese and other companies in litigations and license negotiations with non practicing entities. In doing so, he has appeared before judges in the U.S. District Courts of Texas, Virginia, Delaware, California, and Nevada.
Representative significant representations include:
ITC Investigation No. 337–TA–819: ITC Patent Infringement–Dynamic Random Access Memory Devices
In 2012–13, Mr. Busby was the lead trial attorney for the 819 Investigation. After a two week hearing, an ITC Administrative Law Judge issued an Initial Determination finding Respondent infringed five of six patents on semiconductor memory devices. The ALJ recommended an exclusion order. The 819 Investigation settled soon after the ALJ's Initial Determination.
ITC Investigation No. 337–TA–821: ITC Patent Infringement–Dynamic Random Access Memory Devices
In 2011–12, Mr. Busby served as the lead attorney in the 821 Investigation to defend against Claimants' four patents related to semiconductor memory devices. Claimants' voluntarily dismissed the 821 Investigation one week prior to the hearing after a successful defense of the case.
Team Gordon, Inc. v. Polaris Industries Inc.: American Arbitration Association Case No. 65 196 Y 57 12
In 2012–13, Mr. Busby was the lead attorney for a complex arbitration related to patents and technologies used in off road vehicles. Mr. Busby was the lead attorney and successfully led a trial team through an 11 day arbitration hearing.
Bally Technologies, Inc. v. Business Intelligence Systems, Inc., 2:10-cv-00440-PMP, District of Nevada
In 2010–12, Mr. Busby successfully defended Business Intelligence Systems against three Bally patents related to generating and displaying complex data sets. Business Intelligence Systems was granted summary judgment of no infringement on August 23, 2012.
Lifenet Health v. Musculoskeletal Transplant Foundation 3:06 cv 00387 (ED.Va.)
In 2007, Mr. Busby, while acting as a lead trial attorney for a jury trial, obtained the largest patent jury verdict in the Eastern District of Virginia for 2007: $23 million. The trial judge also found willful infringement. In 2008, in a second bench trial, Mr. Busby successfully defended against defendant's multiple claims of inequitable conduct. The case settled favorably for Mr. Busby's client soon thereafter.
ITC Investigation No. 337–TA–548: ITC Patent Infringement–Tissue Converting Machinery
In 2006, Mr. Busby led a team to defend Taiwanese paper machinery manufacturer Chan Li Machinery in the ITC and a related district court case. The successful defense led to a favorable settlement and dismissal with prejudice after close of discovery.
Roche Diagnostics, Corp. v. Apex Biotechnology et al. 1:04–cv–00358 (SD.Ind.)
In 2005, Mr. Busby acting as lead trial attorney defended his clients in a lawsuit related to patents on electrochemical medical devices. Mr. Busby successfully led a trial team through discovery and a bench trial that resulted in the judge ruling two of the Plaintiff's patents are unenforceable due to inequitable conduct. The case settled favorably thereafter for Mr. Busby's clients.
Prior to practicing law, Mr. Busby served in the U.S. Navy for 11 years, beginning as an electronics technician enlisted man, and then serving five years as an officer onboard nuclear submarines. He received extensive practical engineering experience while serving as a submarine engineering officer, including as an officer in charge of operation of electrical and propulsion turbines and operation of a nuclear reactor. Mr. Busby also served as an engineer in charge of a submarine nuclear plant defueling operation while stationed in Pearl Harbor, Hawaii.
Mr. Busby is admitted to practice in the District of Columbia and Virginia and before the U.S. Patent and Trademark Office and the U.S. Court of Appeals for the Federal Circuit.
