Robert J. Benson

Partner
Intellectual Property

Mr. Benson’s practice integrates nearly 25 years of experience in patent litigation, licensing, and other commercial and intellectual property litigation in federal and state courts.  From significant multi-jurisdictional litigation to disputes between small competitors, Mr. Benson has a consistent track record of winning on the merits and achieving favorable resolutions on behalf of his clients.

Mr. Benson has extensive experience in all phases of litigation, through trial and appeal. His breadth of experience includes obtaining injunctive relief, litigating section 337 cases before the ITC and arguing before the Federal Circuit. He also integrates reexamination, inter partes review and other PTO proceedings into broader litigation and licensing strategies. Mr. Benson’s experience encompasses both defensive patent litigation and offensive patent enforcement through licensing and litigation.

As a result of his frequent representation of clients in Taiwan, Japan and China, Mr. Benson has also developed an expertise in litigating issues that arise in the context of global businesses, multinational litigation and cross-border disputes.  Patent litigation and licenses often give rise to unique issues, claims and defenses in the international context.  Mr. Benson collaborates with each client to develop creative and cost-efficient strategies tailored to achieve his client’s objectives in each situation.

Mr. Benson has been named a Super Lawyer for 10 consecutive years, from 2005 through 2014.  Mr. Benson’s cases have involved a wide range of technologies, including mobile devices, computer hardware and software, telecommunications, semiconductors, LCDs, LEDs, printers, cameras, and other consumer electronics. 

Mr. Benson’s commitment to service extends beyond his professional clients.  He is the founder of Arms of Love International, a charitable organization that operates homes for abandoned and abused children. Since 1998, Mr. Benson has helped establish new programs in Africa, North and South America, and Southeast Asia that have cared for hundreds of children.

A feature article in the Orange County Register, "A Global Embrace," traced his personal journey from being abandoned as a child to becoming an international advocate for children. He often shares his inspirational stories through articles such as the National Law Journal piece "A Lawyer's Story of Giving and Forgiving," and "Why Are You Here? A Volunteer in Tohoku Shares the Journey of His Heart," published in the Asahi Shimbun in March 2012.

Mr. Benson is a founding member of the East Bay Community Law Center, which provides legal services to the low-income community.

Robert Benson
Mr. Benson has:
  • Obtained summary judgment of non-infringement on behalf of a leading manufacturer of inkjet printers, resulting in the dismissal of the case.
  • Obtained summary judgment of invalidity of all asserted patent claims in an infringement action brought against a leading printer manufacturer, based on anticipation, lack of written description and indefiniteness, resulting in dismissal of the case.
  • Obtained a preliminary injunction based on infringement of copyrights in source code on behalf of the world’s leading supplier of controller chips for optical disk drives, argued an appeal from the injunction before the United States Court of Appeals for the Federal Circuit, and obtained a settlement of US$50 million.
  • Negotiated a favorable settlement on behalf of a leading cellular phone manufacturer after obtaining a ruling of patent invalidity on summary judgment, following a nine-day Markman hearing in the Southern District of California.
  • Obtained summary judgment of non-infringement on behalf of an Asian client in a patent infringement case filed in Delaware against more than 60 defendants.
  • Obtained summary judgment on patent infringement and various state law claims in the Northern District of California on behalf of the world’s largest privately held company.
  • Developed and executed a litigation and licensing strategy on behalf of one of the largest health insurers in the United States in a 23-patent multidistrict litigation in the Central District of California involving hundreds of entities and accused systems and services.
  • Litigated offensive and defensive patent infringement claims between an Asian manufacturer of Wi-Fi chips and a German competitor, resulting in a favorable settlement for the client.
  • Prevailed on a motion to dismiss a patent infringement lawsuit that had been brought in the Eastern District of Virginia against a leading provider of digital video recorders.
  • Obtained summary judgment on claims for contributory copyright infringement, violations of the Federal Communications Act and unfair competition that had been asserted against a manufacturer of cable television descramblers.
Speeches
  • Speaker, "Standard Essential Patents in the U.S. Courts and the ITC: Injunctive Relief and Calculating a FRAND Royalty" and "Patent Exhaustion and its Implications for Taiwanese Companies Doing Business in the United States," National Technology Law Conference, November 2013
  • Speaker and Leading Organizer, "Shifting Sands: What is Discoverable and Admissible for Damages, Willfulness and Other Purposes," IPO Discovery Committee Roundtable, Washington, D.C., March 21, 2011
  • Speaker with Chief Judge James Holderman, "Model Local Rules for Patent Cases," IPO Annual Meeting 2009
  • Faculty, "Protection of Intellectual Property Rights," Center for International Legal Studies
Select Publications
  • "Patent Exhaustion and its Implications for Japanese Companies Doing Business in the United States," JCA Journal, November 2013
  • "US Patent Reform: The New 'First Inventor to File,' System - With a Twist," North American Free Trade & Investment Report, Vol. 21, No. 17, September 30, 2011
  • "Beyond Borders: How US Patent and Copyright Laws Can Reach Transactions That Occur Entirely Outside US Borders," Intellectual Property & Technology Law Journal, September 1, 2006
Admitted In
  • California
Court Admissions
United States Courts of Appeals
  • Federal Circuit
  • Ninth Circuit
United States District Court
  • Central District of California
  • Eastern District of California
  • Northern District of California
  • Southern District of California
  • Eastern District of Texas

Education
  • J.D., Order of the Coif, University of California, Berkeley School of Law, 1990
  • B.S., President's Scholar, Aeronautical Operations, Charles W. Davidson College of Engineering at San José State University, 1987
Memberships
  • Master of the Bench, Howard T. Markey Intellectual Property Inn of Court
  • Japan America Society of Southern California - Board of Governors
  • USC Law School Intellectual Property Institute - Planning Committee
  • Intellectual Property Owners Association - Discovery Committee
  • American Intellectual Property Law Association
  • Inter-Pacific Bar Association

Please do not include any confidential, secret or otherwise sensitive information concerning any potential or actual legal matter in this e-mail message. Unsolicited e-mails do not create an attorney-client relationship and confidential or secret information included in such e-mails cannot be protected from disclosure. Orrick does not have a duty or a legal obligation to keep confidential any information that you provide to us. Also, please note that our attorneys do not seek to practice law in any jurisdiction in which they are not properly authorized to do so.

By clicking "OK" below, you understand and agree that Orrick will have no duty to keep confidential any information you provide.

OK
Cancel