Robert R. Axenfeld

Of Counsel

1235 Westlakes Drive, Suite 200
Berwyn, PA 19312
P: 610-889-2246
F: 610-889-2220
V: Download V-Card
Services:

Intellectual Property

Industries:

Computers, Consumer / Business Software, E-Commerce, Communications, Electronics, Medical Devices / Goods, Health-care Systems, Pharmaceuticals, Energy-Conservation Technologies

State Admissions:

District of Columbia, Pennsylvania, Washington, United States Patent and Trademark Office (Patent Attorney)

Office:

Berwyn, PA

Law School:

Temple University School of Law, Franklin Pierce Law Center

Undergraduate School:

Temple University

Professional Experience:

Robert R. Axenfeld is a Registered-Patent Attorney in the Intellectual Property Group of Montgomery McCracken. With more than 18 years of private practice intertwined with in-house experience, he represents and advises high-technology clients in all facets of patent, trademark, copyright, and trade-secret law.

Patent and Trademark Procurement
Mr. Axenfeld leads the firm's patent-procurement group in matters involving mechanical, electronic, and computer-related technologies before the United States Patent and Trademark Office and internationally. Specifically, he manages the preparation and prosecution of patents in technological areas, such as medical devices, health-care systems, computers, consumer and business software, e-commerce, communications, processors, data storage, energy-conservation technologies, pharmaceuticals, and surgical devices. Mr. Axenfeld also prosecutes and manages a robust trademark-procurement practice.

IP Litigation

Mr. Axenfeld specializes in patent and Intellectual Property (IP) litigation in federal and state courts, and proceedings before administrative agencies, including serving as lead counsel in these forums. For instance, he recently defended, and successfully settled a patent infringement claim on behalf of an ophthalmic-surgical device company in the Eastern District of Pennsylvania. Discovery obtained during this case led to a nearly $1.2-million-dollar sanction against the plaintiff for witness tampering in a parallel-trade-secret case. Mr. Axenfeld also regularly counsels and represents clients involved in trademark disputes including Internet-related disputes. For instance, Mr. Axenfeld is presently lead counsel in a trademark-infringement suit in the Northern District of Illinois, and a trademark cancellation proceeding before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.

Technology Transactions, IP Licensing and Opinions
Mr. Axenfeld also drafts and negotiates technology agreements and IP-licenses in all technological areas, including pharmaceuticals. Examples of such agreements include patent licenses, joint-development agreements, software licenses, web-based agreements and policies, manufacturing, and marketing agreements. He also assists the firm in providing patent infringement, validity, and freedom-to-operate opinions.

Prior Experience
Prior to joining Montgomery, McCracken, Mr. Axenfeld was a principal in the law firm of Werner & Axenfeld, P.C., where he closely counseled clients in a full range of patent, trademark, and copyright matters. While there, he served as lead counsel in several IP cases, which included successfully defending and settling a separate patent-infringement claim on behalf of medical-device company; as well as successfully defending, and settling a copyright-infringement claim on behalf of an individual.

Prior to starting Werner & Axenfeld, P.C., Mr. Axenfeld served as in-house counsel for Unisys Corporation, and Lucent Technologies Inc. While in-house at both Unisys and Lucent, he negotiated and drafted intellectual property agreements, including patent licenses, joint ventures, joint developments, technology transfers, and software licenses. He also provided counsel on mergers, acquisitions, and divestitures.

While attending law school, Mr. Axenfeld clerked as an Extern for the Honorable Alan D. Lourie, of the United States Court of Appeals for the Federal Circuit.

Mr. Axenfeld also interned for the Honorable Judge Martin F. Loughlin; and James R. Starr, Clerk of Court, both of the United States District Court, for the District of New Hampshire.

Mr. Axenfeld is also a sole inventor on U.S. Patent Nos. 5,991,886 and 6,269,448.

Publications:

  • "Business Methods: Are They Still Patentable?," The Legal Intelligencer, (2008)
  • "The Shifting Sands of §101 and §112 Requirements for Computer Program - Related Interventions"
  • "Overcoming 35 U.S.C. §101 Rejections of Electronic and Computer Inventions"
  • "Preparing & Prosecuting Electronic & Computer Related Patent Applications: Overcoming Statutory Subject Matter Rejections"

Admissions:

  • Pennsylvania
  • Washington, D.C.
  • Washington
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Third Circuit
  • U.S. District Court for the Eastern District of Pennsylvania
  • Registered to Practice before the United States Patent and Trademark Office (Registered Patent Attorney)

Education:

  • Masters in Law (LL.M.) in Trial Advocacy from Temple University Beasley School of Law in 1996
  • J.D. from Franklin Pierce Law Center in 1991
  • B.S. in Electrical Engineering from Temple University in 1988