Overview

For over 25 years, Paul E. Franz has been helping clients develop and manage their patent portfolios across a wide variety of technology areas, both in the U.S. and internationally.

Paul’s practice encompasses patent portfolio counseling and management, patent application preparation and prosecution, patent infringement and invalidity analysis, licensing, and acquisition diligence. With clients of all sizes, Paul maintains a diverse advisory practice, ranging from helping startup companies develop initial intellectual property harvesting procedures and strategies to providing larger companies with strategic guidance to manage and monetize their complex patent portfolios.

Paul’s technology experience encompasses many electrical, mechanical, and software-related innovations, including quantum computing, computer architecture, virtual machines, machine learning, search engines, cloud computing, E-commerce, and power systems.

Paul is also recognized as a skilled writer. He is a two-time winner of the Georgia Bar Journal’s annual fiction writing competition, and his other fiction has appeared in The Saturday Evening Post and Interzone.

Before practicing law, Paul was an electrical engineer with the Naval Undersea Warfare Center in Keyport, Washington, for eight years.

Experience

NICE Systems, Inc. & NICE Systems, LTD. v. Witness Systems, Inc. Case No. 1:06-cv-00311 (D. Del) – Patent infringement action involving 10 patents related to call monitoring and recording systems.

Sony Corp., et al. v. Eastman Kodak Co., Civ. A. No. 04-CV-3193 (N.J. 2004) – Patent infringement action involving 24 patents for film cameras and photographic film processing.

Hand Held Products, Inc., et al. v. Symbol Technologies, Inc., et al., Civ. A. No. 04-3 (E.D. Va. 2004) – Patent infringement action on four patents for scanners and imaging; settlement reached after successfully dismissing patents out of Delaware and defeating a motion to transfer from Virginia.

Symbol Technologies, Inc., et al. v. Hand Held Product, Inc., et al., Civ. A. No. 03-103 (SLR) (D. Del. 2003) – Patent infringement action on 12 patents and declaratory judgment on 36 other patents for scanners and imaging; settlement reached after successfully dismissing patents out of Delaware and defeating a motion to transfer from Virginia.

Technology Licensing Corp. v. Gennum Corp., No. 3:01-CV-4024-RS (N.D. Cal. 2002) – Patent infringement case on two patents related to video synchronization separators; successfully precluded damages expert from proffering testimony pursuant to Daubert motion.

Tanashin Denki Co., Ltd. v. Thomson Multimedia Inc., et al., IP99-C-0836-Y/K (S.D. Ind. 1999) – Patent infringement case involving five patents on cassette tape decks; jury verdict: patents valid and infringed.

Centillion Data Systems, Inc. v. Ameritech Corp., et al., IP98-C-1748 -Y/F (S.D. Ind. 1998) – Patent infringement action involving two patents on telecommunication billing; case administratively closed pending bankruptcy proceeding.