Rafael has dedicated his practice and career over the past 15 years to intellectual property law. Prior to co-founding The Brickell IP Group, Rafael practiced with several large, national and multi-national law firms. In addition to his experience with large firm practices, Rafael also held positions as in-house intellectual property counsel for IBM Corporation; served as an electronics engineer at the National Security Agency; and worked as a patent examiner at the United States Patent and Trademark Office.
Throughout his career, Rafael has acquired extensive litigation experience in all areas of intellectual property, including patent, copyright, trademark, and trade secret litigation. He also has experience handling several types of adversarial administrative proceedings before the USPTO’s Patent Trial and Appeal Board, including Inter Partes Review (IPR) and Covered Business Method (CBM) proceedings as well as ex parte reexamination proceedings.
In addition to litigation, Rafael advises clients on a variety of transactional matters involving intellectual property and technology, such as license agreements, service agreements, confidentiality agreements, and open source software investigations and clearances. He also conducts due diligence investigations in connection with mergers and acquisitions.
As a registered patent attorney, Rafael has represented clients on hundreds of patent prosecution matters before the USPTO and has procured patent rights for a variety of technologies, including software, computer hardware, semiconductors, radio-frequency systems, logic circuits, furniture designs, mechanical devices and biomedical devices. Rafael’s intellectual property prosecution experience also includes trademark prosecution and proceedings before the USPTO’s Trademark Trial and Appeal Board.
THE GEORGE WASHINGTON UNIVERSITY LAW SCHOOL
JOHNS HOPKINS UNIVERSITY
M.S., Electrical Engineering
UNIVERSITY OF PUERTO RICO
B.S., Electrical Engineering, Magna Cum Laude
U.S. Patent and Trademark Office
U.S. District Court for the Southern District of Florida
Florida Supreme Court
Honors and Awards
Florida Super Lawyers, 2017
40 Under 40 Award, Outstanding Lawyers of Miami-Dade County, 2011
IBM Client Service Award for due diligence work in proposed acquisition of private company, 2008
IBM Bravo Award for work performed as part of divestiture of IBM’s personal computer business to Lenovo, 2005
IBM Bravo Award for meeting patent filing goals, 2003
Hispanic National Bar Association, Member
Avionica, Inc. v. Teledyne Technologies, Inc., Case No. 0:16-cv-60127 (S.D. Fla. 2017): provided expert witness testimony on behalf of plaintiff in patent infringement action against direct competitor.
E-Loan v. IMX, Inc., CBM2015-00012 (Patent Trial and Appeal Board 2015): Lead trial counsel for petitioner in Covered Business Method Proceeding before the USPTO’s Patent Trial and Appeal Board. Obtained cancellation of all claims asserted in related litigation against E-Loan, Inc. resulting in a dismissal of the litigation.
Sensus USA, Inc. v. Certified Measurement, LLC, IPR2015-01454 (Patent Trial and Appeal Board 2015): Lead trial counsel for petitioner in an Inter Partes Review proceeding before the USPTO’s Patent Trial and Appeal Board. The PTAB granted the petition for review of all claims for which the IPR was requested, resulting in a settlement of the co-pending lawsuit between the parties.
Rain Gutter Pros LLC v. MGP Manufacturing LLC, Case No. 2:14-cv-00458 (W.D. Wash. 2014): Presented claim construction arguments (first chair) on behalf of patentee which were fully adopted by the court, resulting in a favorable settlement for the client.
SIPCO, LLC v. Coulomb Technologies, et al., Case No. 6:11-cv-00048 (E.D. Tex. 2012): Represented defendant in a patent infringement lawsuit involving wireless mesh networks. Obtained favorable Markman ruling which was followed by a favorable settlement agreement for the client.
Freshloc Technologies, Inc. v. Awarepoint Corp., Case No. 3:10-cv-01532 (N.D. Tex. 2010): Represented defendant in a patent infringement action. Obtained grant of a patent re-examination, cancellation of all asserted claims, and stay, which resulted in ultimate dismissal of the case.
Exigent Technology v. Radiant Telecom, Inc., et al., Case No. 1:04-cv-22140 (S.D. Fla. 2007): Represented defendant in a patent infringement action. Obtained favorable Markman ruling and won motion to stay which resulted in a dismissal of the case.
X-Cyte v. Amtech Systems Corp., Case No. 3:01-cv-01159 (N.D. Cal. 2001): Represented defendant in a patent infringement action. Obtained favorable Markman ruling and won motion to stay which resulted in a dismissal of the case.
Represented IBM in divestiture of its personal computer business to Lenovo and in divestiture of its printer business to Ricoh.
Represented FPL FiberNet in acquisition of optical fiber technology assets from Grande Communications Networks, LLC.
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