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Pedro F. Suarez

Member

[email protected]

+1.858.314.1540

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Pedro focuses his practice on patent prosecution and client counseling with an emphasis on AI/machine learning, complex software (including database management systems), wireless devices (e.g., 4G, 5G, and 6G), vaporizers, computer security, and medical devices.

As part of his client counseling practice, Pedro works with each client to strategically develop an IP portfolio that considers the client’s competitive landscape. He does not believe in a one-size-fits-all approach.

Pedro has extensive experience handling a variety of IP matters, including patents, designs, copyrights, trademarks, trade secrets, open-source licensing, international patent/design protection strategies, pre-litigation strategy and counseling, litigation counseling and strategy, freedom-to-operate and infringement opinions, and patent and trade secret litigation. Early in his career, Pedro litigated patent infringement and validity disputes before several U.S. district courts in matters involving multiple patents and complex technologies.

While pursuing a Master of Science in Electrical Engineering, Pedro developed AI software algorithms, including facial feature detection algorithms, and published some of his work in an IEEE magazine.

Before beginning his legal career, Pedro gained over 12 years of technical experience in engineering positions with the U.S. Air Force, National Security Agency (NSA), and technology companies. As an Air Force engineer, Pedro developed and tested a variety of advanced communication systems and advanced image processing systems. He also gained experience in the semiconductor field while working at KLA Instruments. After KLA, Pedro was employed as a principal member of the technical staff at Litton/TASC in Annapolis Junction, Maryland, where he consulted on various communication, computer, and network security matters.

Pedro is a frequent lecturer on intellectual property.

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

About Pedro: Clients told Chambers USA researchers, "He is one of the best prosecution patent attorneys I have worked with" and "He has a very high standard of quality. He commands the same from his associates, so we have a cohesive team.”

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
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viewpoints

The new Unified Patent Court (UPC) and the Unitary Patent (UP) system are scheduled to kick off on June 1, 2023, with the Sunrise Period for requesting “opt outs” beginning March 1, 2023.

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Claim language is important. Particularly when dealing with software systems, claims may be held invalid as being indefinite when the claim language is characterized as “means-plus-function” under pre-AIA 35 U.S.C. §112 ¶ 6 (now AIA 35 U.S.C. §112(f)).
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Indefiniteness: Are You Reasonably Certain?

November 21, 2014 | Blog | By Pedro Suarez, Tom Jackman

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.
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News & Press

Press Release Thumbnail Mintz

Mintz is pleased to announce that Venture Capital & Emerging Companies Co-chair Jeremy Glaser and Members Sebastian Lucier and Pedro Suarez have been named to the San Diego Business Journal’s Leaders of Influence in Technology 2024 list. The award recognizes industry leaders in technology and highlights their careers and accomplishments.

Press Release Thumbnail Mintz

BOSTON, MA – In the 2023 edition of 'IP Stars,' published by Managing Intellectual Property (Managing IP), Mintz achieved recognition in two nationwide categories and received acknowledgment for the exceptional performance of nine of its attorneys.

Press Release Thumbnail Mintz
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. 
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Events & Speaking

Speaker
Apr
8
2021

Entrepreneur's Toolkit

UC San Diego

Webinar

Webinar Reference Image
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
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Recognition & Awards

  • San Diego Business Journal: Leaders of Influence in Technology (2024)

  • Managing Intellectual Property: Patent Star - United States (2022 - 2024)

  • Daily Journal Top Intellectual Property Lawyers List (2021)

  • San Diego Daily Transcript: Top Attorneys (2010)

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Involvement

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