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Pedro F. Suarez

Member

[email protected]

+1.858.314.1540

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Pedro focuses on all aspects of patent law, including IP portfolio development and management, preparation and prosecution of patent applications, freedom to operate and infringement opinions, patent monetization, litigation including Inter Partes Reviews (IPRs), with an emphasis on wireless, software, artificial intelligence, machine learning/neural networks, computer security, and medical devices.

He has extensive experience in handling patent matters for emerging and global high-technology companies as well as Universities, and draws on his litigation experience to develop high-value patent portfolios. Pedro has also litigated patent infringement and validity disputes before several US district courts, in matters involving multiple patents and complex technologies. More recently, Pedro represented a Finnish-based patent owner in an IPR, in which all claims of the patent were found valid.

Representative technologies include all aspects of wireless including GSM, CDMA2000, 3GPP, LTE, 4G, 5G, Wi-Fi, Bluetooth, MIMO, spread spectrum, millimeter wave, and IoT; artificial intelligence including machine learning, neural networks, face recognition, and pattern recognition; software-based systems including databases, user interfaces, web-based systems and tools, and cloud computing; lasers and optics including optical devices, lenses, and filters; network security including encryption and intrusion/virus protection; and image and data compression.

Before joining Mintz, Pedro worked for an international intellectual property law firm in Washington, DC. Before beginning his legal career, Pedro gained over 12 years of technical experience in engineering positions with the US Air Force, National Security Agency (NSA), and technology companies. As an Air Force engineer, Pedro developed and tested a variety of advanced communication systems as well as advanced image processing systems. He also gained experience in the semiconductor field while working at KLA Instruments. Next, Pedro was employed as a principal member of the technical staff at Litton/TASC in Annapolis Junction, Maryland. In this position, he consulted on a variety of communication and computer/network security matters.

Pedro has also lectured on intellectual property, including a presentation on “De-Mystifying Intellectual Property” to technology entrepreneurs at the University of New Mexico and Stanford University. More recently, he moderated a panel on “Effectively Leveraging Your IP to Finance Your Start-Up” at the University of California, San Diego, participated as a panelist at the San Diego Daily Transcript’s IP Roundtable on Patent Quality, and lectured on "Entrepreneurial Best Practices" at the UC Berkley Haas School of Business.

Pedro is a Lieutenant Colonel (retired) in the US Air Force Reserves.

Education

  • George Washington University (JD)
  • Air Force Institute of Technology (MSEE)
  • US Air Force Academy (BSEE)

Experience

  • Nortel Networks Corp. v. Ciena Corp.: settled with a $25 million payment to client Nortel
  • PCTEL, Inc. v. Broadcom Corp.
  • Tektronix, Inc. v. LeCroy Corp.
  • UTStarcom, Inc. v. Starent Networks Corp.
  • Telcordia v. Alcatel
  • IPR2015-01769, — U.S. Patent 7,793,433 — Zero Gravity Inside, Inc. v. Footbalance System OY (represented patent owner; all claims survived the IPR).
  • Successful Defense of Multiple IPRs - Individually Formed Footwear Mintz Levin represented respondent in two IPRs challenging patents directed to individually formed footwear and a related method. PTAB denied institution in response to one of the petitions and entered a Final Written Decision in favor of our client, preserving all challenged claims, in the other. IPR2015-01769, IPR2015-01770

Recognition & Awards

  • San Diego Daily Transcript: Top Attorneys (2010)

Involvement

  • Board member, STC.UNM, the University of New Mexico's technology transfer arm
  • Board member, EVONEXUS, San Diego's premier incubator
  • Member, Intellectual Property Owners Association (IPO) Software

Recent Insights

Viewpoints

News & Press

Viewpoints

The indefiniteness standard has, until recently, been very high—only an “insolubly ambiguous claim” was considered indefinite (see, e.g., Honeywell Intern., Inc. v. International Trade, 341 F. 3d 1332, 1338–9 (Fed. Cir. 2003))—but recent events have made it easier to invalidate a claim as being indefinite.

News & Press

Pedro F. Suarez, a Member of Mintz's Intellectual Property Practice, was recently named a member of the Board of Directors for technology incubator EvoNexus. Mr. Suarez will be joining representatives from EvoNexus sponsor companies and industry advisors. 

Events

Panelist
Feb
22
2017

UC San Diego's IGNITE Conference

University of California San Diego

UC San Diego Price Center, San Diego, CA

Speaker
Mar
17
2016

Procopio International Business Summit 2016

University of San Diego School of Business

San Diego, CA

Speaker
Nov
3
2015

Startup 101 Boot Camp

UC San Diego The Basement

San Diego, CA

Speaker
Sep
17
2015

Arrowhead Intellectual Property Speaker Series: Protecting Your Mobile App

Arrowhead Center

Arrowhead Center at NMSU Genesis Center C, 3655 Research Drive

Speaker
Jun
2
2015