For a detailed description of Mr. Burns’ legal experience, click the applicable + sign below.
Mr. Burns has been nationally recognized for his knowledge and expertise in patent litigation and patent law. For 14 years in a row, he has been voted by his professional peers to be listed in Best Lawyers in America for patent litigation and patent law. He has extensive experience in patent litigation representing plaintiffs and defendants in numerous federal courts in California, Arizona, Texas and Delaware. His knowledge and experience in negotiating and drafting patent licenses has been recognized by his appointment as a leader in the Licensing Executives Society of the USA and Canada. He has advised numerous clients on patent prosecution and enforcement strategies. Patentable inventions that he has litigated, drafted licenses for, and/or advised clients on, include computer hardware and storage, software, databases, information technology, Internet and e-commerce, cellular phones, mobile apps, gaming, artificial intelligence, blockchain, financial technology, semiconductors and integrated circuits, pharmaceuticals, drug therapies and delivery methods, biologics, biotechnology (genomics, proteomics, stem cells), medical and dental devices, digital medicine, environmental protection, telecommunications, geolocation, transportation, manufacturing processes, mechanical devices, automotive products, consumer products, chemicals and chemical processes. Mr. Burns designed and taught a law school patent litigation course and a biotechnology licensing and litigation course at a top 30 ranked law school. He has been quoted in the legal press on patent matters, and has been a frequent speaker on patent law issues. Mr. Burns is registered to practice before the U.S. Patent and Trademark Office. Representative patent litigation matters include the following:
- Defended publicly-held healthcare company in patent infringement suits involving patents on a comprehensive healthcare management system.
- Represented a dental device company resulting in the accused infringer exiting the market.
- Represented an environmental company resulting in the accused infringer exiting the market.
- Member of a team of attorneys representing one of the largest semiconductor fabrication companies in the world in litigation to enforce a settlement of a patent infringement suit resulting in $200 million settlement.
- Defended an in-vehicle sensor technology company resulting in a favorable settlement and dismissal.
- Represented auto racing protective gear manufacturer resulting in a favorable license agreement.
- Defended manufacturer against major competitor and successfully defeated a preliminary injunction.
- Represented a chemical processing company in patent licensing litigation resulting in favorable settlement.
- Defended chemical product distributor involving industrial surfactants.
- Defended a telecommunications company resulting in a favorable settlement and dismissal.
- Defended public companies in patent infringement suits involving bar code scanning technology.
- Defended a healthcare company in settlement of patent litigation involving machine-vision technology.
- Represented audio-visual technology company in connection with a patent licensing dispute.
- Advised famous musical instrument and audio company on its patent portfolio.
- Served as arbitrator in a multimillion dollar patent infringement dispute involving multiple claims of infringement against many of the accused infringer’s products including presiding over a claim construction phase and a 3-week trial.
Mr. Burns has been listed in Best Lawyers in America for 14 years in a row for his expertise in copyright law. He has counseled clients, negotiated license agreements and acted as lead litigation counsel in numerous copyright matters including those involving software, video media content, music, film, television, photographic images, art, publishing and architectural works. He has served as a Chapter Chair of, and national meeting co-chair and speaker for, The Copyright Society of the USA, and has been a prolific speaker on copyright law issues for such organizations as the American Intellectual Property Law Association and the Beverly Hills Bar Association, were he recently led a panel on music copyright infringement. Representative copyright matters include the following:
- Represented both plaintiffs and defendants in numerous software copyright infringement suits.
- Represented a manufacturer of gaming equipment in copyright infringement suit against competitor resulting in its exiting the market.
- Defended a Fortune 100 insurance company in a multimillion dollar copyright infringement suit involving architectural works resulting in a favorable settlement and dismissal.
- Represented a global publishing company in a copyright and trademark infringement suit resulting in dismissal.
- Defended multiple clients in copyright infringement suits involving alleged infringement of unlicensed images on websites resulting in favorable settlements and dismissal.
- Represented scholarship software platform provider in copyright infringement litigation against competitor.
- Represented an education company accused of copyright infringement in litigation following an arbitration.
- Represented a songwriter in a copyright infringement dispute against a famous producer and major record label.
- Advised numerous clients on copyright protection and infringement and clearance in software, databases, music, publishing, photography, website content, videos, film, TV, fashion, and gaming.
- Served as Arbitrator in numerous copyright infringement disputes involving the unauthorized downloading and copying of Internet-based entertainment content including music, film, TV and videos.
Mr. Burns has counseled clients on trademark registration and brand clearance and protection strategies, and has served as lead counsel in numerous trademark litigation matters. He has also negotiated and drafted trademark license agreements. Mr. Burns’ trademark expertise has been recognized by his appointment by the International Trademark Association to its Panel of Trademark Mediators. With respect to franchise law, he has served as an Arbitrator in over 20 franchise disputes, including a number of franchisee disputes for a 7,000+ store Fortune 500 franchise system. He has also been asked to speak on trademark matters for organizations such as the Licensing Executives Society and has taught law students how to settle trademark disputes. Representative trademark matters include the following:
- Defended a global publishing company in a trademark infringement litigation resulting in a dismissal.
- Represented dental device manufacturer in trade dress infringement cases, including supervision of a secondary meaning and likelihood of confusion survey, resulting favorable settlement.
- Represented a consumer healthcare product company in trademark infringement and false advertising case.
- Represented a cosmetic product distributor accused of trade dress infringement resulting in dismissal.
- Advised musical instrument manufacturer in connection with trademark and trade dress protection disputes.
- Advised numerous start-ups and established companies on trademark clearance and registration.
Mr. Burns has litigated many trade secret misappropriation cases and advised companies on how to protect their trade secrets and other confidential information. He has been a speaker for organizations such as the Association of Corporate Counsel and The Sedona Conference on trade secret protection and enforcement. A representative sample of matters is as follows:
- Member of a team of attorneys representing one of the largest semiconductor manufacturers in the world in trade secret litigation involving semiconductor processing and manufacturing with lawsuits pending in California and China that resulted in the entry of a preliminary injunction and a $200 million settlement.
- Represented a publicly-held technology company in trade secret misappropriation litigation involving former senior employees who launched a competing company and coordinated with law enforcement which seized computers containing trade secrets.
- Represented a European software development company in trade secret misappropriation case against U.S. based senior developers who launched a competing company resulting in issuance of preliminary injunction.
- Represented a famous consumer food product company in connection with a FBI investigation and trade secret misappropriation litigation arising from defendants’ attempt to misappropriate its secret recipe.
- Advised a famous lubricant consumer product company in connection with protection and enforcement of its trade secret formulas.
Mr. Burns has decades of experience negotiating and litigating many technology-related agreements including numerous computer software development, master services agreements, statements of work, maintenance and license agreements, joint technology development agreements, technology manufacturing and distribution agreements, technology license and transfer agreements, and outsourcing agreements. He received a B.S. in Computer Science, magna cum laude, worked as a software developer before law school and continued to update his computer programming skills while practicing law. Mr. Burns’ knowledge and experience in technology-related litigation and transactions includes computer hardware and storage, software, databases, information technology, Internet and e-commerce, cellular phones, mobile apps, gaming, artificial intelligence, blockchain, financial technology, semiconductors and integrated circuits, pharmaceuticals, drug therapies and delivery methods, biologics, biotechnology (genomics, proteomics, stem cells), medical and dental devices, digital medicine, environmental protection, telecommunications, geolocation, transportation, manufacturing processes, mechanical devices, consumer products, chemicals and chemical processes. A representative list of technology litigation and transactional matters is as follows:
- Represented Fortune 500 healthcare company in litigation against international computer consulting firm in connection with software renovation dispute to bring enterprise-wide software in compliance with HIPAA privacy regulations resulting in a favorable settlement.
- Represented several large companies and a government entity in negotiations and/or litigation arising from alleged breach of, numerous software development, licensing and maintenance contracts involving enterprise-level systems in industries including healthcare, pharmaceuticals, food services, retail and sports.
- Represented Fortune 1000 consumer products company against one of the largest enterprise resource planning software providers in a pre-litigation dispute that resulted in a settlement before commencing suit.
- Represented a mobile app software development platform company in multiple licensing transactions.
- Represented a digital hospitality marketing technology company in negotiating license agreements and dispute resolution.
- Represented numerous technology start-up companies as outside general counsel drafting all of their agreements.
Mr. Burns has acted as arbitrator, lead litigation counsel and/or advised clients in connection with numerous life sciences matters including patent protection and enforcement, trade secret protection and enforcement, manufacturing, sourcing, supply, distribution, clinical trial and clinical data agreements involving pharmaceuticals, biologics, biotechnology (genomics, proteomics, stem cells), medical and dental devices, and digital medicine. He has advised life sciences clients on regulatory compliance including HIPAA, cybersecurity and privacy. He designed and taught a law school course in Biotechnology Licensing & Litigation at a top 30 law school and served in leadership positions in the Licensing Executives Society of the USA and Canada. Representative life sciences-related matters include the following:
- Represented a publicly-held pharmaceutical benefit management company in connection with intellectual property litigation and protection and numerous pharmaceutical-related agreements.
- Represented a medical breath analyte device company in connection with license agreements and settlement of disputes.
- Represented a medical device manufacturer in multiple manufacturing, joint research and development and technology transfer agreements with major life sciences companies.
- Represented a biotechnology company in connection with patent protection for biologics and the drafting of all of its agreements.
- Represented a proteomics company in connection with protection of electronically stored information and litigation preparation.
Mr. Burns has been involved in healthcare-related legal matters for over 20 years. Mr. Burns represented the nation’s first pharmacy benefit management company in many healthcare-related issues including the Health Insurance Portability and Accountability Act (HIPAA), pharmacy regulation, prescription drug formularies, and agreements with pharmaceutical companies. Mr. Burns acted as lead counsel in multiple federal court cases involving a comprehensive healthcare management and insurance reimbursement computer software system that included investigation into healthcare information technology developed and used by major healthcare and EMR information technology providers, major health insurers, HMOs and MCOs, and world-renowned hospitals and other health care providers. Paul also acted as lead counsel in an arbitration involving a major healthcare software system development project to bring it in compliance with HIPAA with alleged cost overruns and major system failures. In addition to Mr. Burns’ healthcare litigation experience, he has (a) advised hospital and digital medicine providers on HIPAA data security and privacy obligations, (b) drafted agreements with digital medicine/medical device distributors, healthcare providers and patients for online sales of medical devices, and (c) drafted numerous manufacturing, research and development and licensing agreements for medical device manufacturers and biotechnology/life sciences clients.
Mr. Burns’ entertainment industry experience includes handling all legal matters as general counsel for one of the first Internet web-based entertainment content streaming companies, celebrity-owned and based in Hollywood for which he (i) negotiated entertainment and media content production agreements, copyright license agreements, talent agreements, and vendor agreements, (ii) oversaw the preparation of its S-1 Registration Statement filed with the SEC, (iii) managed its relationship with SAG/AFTRA and the other guilds, and (iv) advised management on numerous legal and business matters applicable to an Internet-based entertainment content start-up. Mr. Burns obtained a successful settlement for a songwriter against a major record producer and label, and advised entertainment and media content producers regarding protection of their copyrights. Mr. Burns has also advised many Internet start-ups in connection with copyright clearance and obtaining rights to, as well as production of, entertainment content.
Mr. Burns’ knowledge and experience in entertainment and media is recognized by the demand for his expertise in mediating settlements of, and presiding as arbitrator over, entertainment disputes. From 2012 – 2017, Mr. Burns served as arbitrator in over 80 music, video, film and TV show disputes against subscribers of Internet Service Providers brought by the Recording Industry Association of America, and the Motion Picture Association of America. In 2017, Mr. Burns successfully mediated a multi-party dispute involving the star of a hit TV series concerning the foreign tax treatment of compensation. In 2018, Mr. Burns was appointed as an arbitrator in a multimillion dollar licensing dispute between the owners of an animated TV show and a toy manufacturer. In 2019, Mr. Burns was appointed as an arbitrator in a dispute involving the estate of a world-famous novelist concerning theatrical rights related to the novel. Other examples of Mr. Burns’ entertainment and media experience include speaking engagements two years in a row at San Diego Comic-Con International on a panel of prominent lawyers and a 9th Circuit U.S. Court of Appeals Judge speaking about artificial intelligence, data privacy and the legal treatment of issues raised by the HBO’s hit TV show Westworld. In June 2018, Mr. Burns spoke on a panel before the Beverly Hills Bar Association on Successful Entertainment Arbitrations and Mediations, with the Senior VP and Head of Litigation of a major studio and a VP of the American Arbitration Association. In June 2019, Mr. Burns headed-up a Beverly Hills Bar Association panel of copyright and music experts addressing the recent music copyright infringement cases involving Led Zeppelin’s Stairway to Heaven and the 2013 mega-hit Blurred Lines. Also in 2019, Mr. Burns was appointed to the American Arbitration Association’s Entertainment Law Advisory Council and helped to launch its annual Entertainment Dispute Resolution Conference.
Mr. Burns’ experience as a commercial litigator and an arbitrator ruling on the meaning of many contractual provisions informs how he is able to negotiate and draft clear, complete and unambiguous contracts to reduce the risk of litigation. Mr. Burns has advised on, negotiated, litigated and/or ruled as an arbitrator on thousands of contracts including the following:
- License Agreements
- Manufacturing Agreements
- Distribution Agreements
- Purchase and Sales Agreements
- Master Services Agreements and Statements of Work
- Healthcare Provider Agreements
- Hospital/Practice Group Agreements
- Nondisclosure Agreements
- Digital Healthcare/Patient Agreements
- Nondisclosure Agreements
- Franchise Agreements
- Insurance Policies
- Entertainment/Media Content Development
- Talent Agreements
- Loan Agreements, Security Agreements and Mortgages
- Real Estate Purchase and Sales Agreements
- Commercial and Residential Lease Agreements
- Shareholder Agreements
- Limited Liability Company Operating Agreements
- Employment and Independent Contractor Agreements
- Business Purchase and Sale Agreements
- Construction Contracts and Subcontracts
- Indemnification Agreements
- Arbitration Agreements
- Mediation Agreements
- Settlement Agreements and Liability Releases
Mr. Burns has significant experience advising clients on (a) the formation of corporations, limited liability companies and partnerships, (b) company governance, (c) capital formation, (d) financing, (e) regulatory issues, and (f) risk management. Mr. Burns has advised companies in connection with disputes among shareholders, liability company members and partners concerning alleged breaches of fiduciary duty, excessive compensation and judicial dissolution of corporations, limited liability companies and partnerships. In addition, Mr. Burns has served as outside General Counsel for numerous start-up and established companies in the Internet and E-Commerce, information technology, life sciences, digital healthcare, entertainment and gaming industries.
During economic downturns, Mr. Burns shifts his litigation focus to creditors rights and bankruptcy. Mr. Burns spent over 7 years representing the Federal Deposit Insurance Corporation in numerous Chapter 11 and Chapter 7 bankruptcy matters and loan workouts during the banking crisis in the 1990s. He also represented several financial institutions in foreclosures, collections and bankruptcy matters during The Great Recession. In 2019, Mr. Burns was again called on by the FDIC to appear in federal court on its behalf in its capacity as Receiver for a closed bank. With his over 20 years of experience in representing the FDIC and financial institutions in creditors’ rights and bankruptcy, Mr. Burns is uniquely qualified to advise companies and financial institutions in times of economic uncertainty and during downturns.
Mr. Burns has 25+ years of commercial litigation experience in state and federal courts that includes breach of contract disputes, financial services (e.g. mortgages, loans, credit, securities, bankruptcy) disputes, creditors’ rights, franchise disputes, employee raiding, non-solicitation and other employment-related disputes, business torts, business break-ups, antitrust claims, securities fraud, real estate and construction disputes, regulatory matters and all categories of business and commercial disputes.
Mr. Burns has extensive experience with, and is recognized as a national expert in, Electronic Discovery. He designed and taught one of the first law school classes in the country on the subject, and has been a speaker on e-discovery at numerous conferences including for the American Bar Association, the Federal Bar Association and a local District Court conference with a federal judge, as well as being quoted in the legal press as an e-discovery expert. He also co-authored a law review article on predictive coding and artificial intelligence entitled “Technology-Assisted Review: The Judicial Pioneers,” 15 Sedona Conf. J. 35 (2014), and was asked to draft the spoliation chapter in the law school casebook Electronic Discovery and Digital Evidence (West American Casebook Series 2008). Mr. Burns has been involved for over 15 years with the law and policy think tank that is universally recognized as the thought leader among practitioners and the judiciary in e-discovery matters, The Sedona Conference® including joining its E-Discovery Working Group in 2004, serving as Co-Chair of its renowned Annual E-Discovery Program in 2011 and 2012, and serving on its Board of Directors since 2015. Mr. Burns has handled numerous E-Discovery issues and disputes as lead litigation counsel and as Special E-Discovery Counsel, and has served as a Special E-Discovery Master in several court and arbitration matters.
Mr. Burns is a nationally-recognized Arbitrator and Mediator. His fellow arbitrators have bestowed upon him one of the highest honors any arbitrator can receive — induction as a Fellow of the prestigious, invitation-only College of Commercial Arbitrators, which has only admitted to date approximately 300 arbitrators throughout the United States. The American Arbitration Association has also recognized Mr. Burns’ extraordinary skills and extensive experience by naming him to its Large Complex Case Advisory Board and having him speak at several Panelist Conferences. In addition, Mr. Burns is an Adjunct Professor of Law at Pepperdine University Caruso School of Law’s top-rated Straus Institute for Dispute Resolution where he has taught arbitration and/or mediation to hundreds of law students and lawyers.
After over 15 years as an arbitrator in over 250 arbitrations, including participation on numerous tripartite arbitration panels, Mr. Burns has gained unique insights in how to represent clients in arbitration to maximize the probability of receiving a favorable arbitration award. Indeed, courtroom trial attorneys have brought Mr. Burns on to their arbitration teams to give them an edge over their adversaries.
Mr. Burns has 15+ years of actual and academic mediation experience in hundreds of actual and simulated mediations, which has enabled him to hone a unique set of skills to increase the probability of the best possible settlement of a dispute in mediation. Indeed, clients retain Mr. Burns as Settlement Counsel as an adjunct to their existing litigation counsel to facilitate the best possible settlement in mediation. Mr. Burns’ extraordinary skills and experience in arbitration and mediation are evidenced through his membership on the following arbitration and mediation panels:
- American Arbitration Association
- International Centre for Dispute Resolution (ICDR)
- Institute for Conflict Prevention and Resolution (CPR)
- Silicon Valley Arbitration and Mediation Center “Tech List”
- International Trademark Association, Panel of Mediators
- American Intellectual Property Law Association List of Arbitrators and Mediators
For more detailed information about Mr. Burns’ mediation and arbitration qualifications and experience, go to www.mediatorpaulburns.com.