Kenneth Rubenstein

Kenneth Rubenstein is co-head of the Patent Law Group and a partner. He also is a registered patent attorney before the U.S. Patent & Trademark Office and a former member of the legal staff at Bell Laboratories. While there are numerous patent law groups at various firms, Ken and his group distinguish themselves from competitors by being able to deal with very sophisticated technology.

Ken has been employed in the patent field since 1979, first as a trainee, then as a registered Patent Agent, and starting in 1983 as an attorney. He has experience in patent litigation, patent procurement, licensing, and technology transfer, particularly in high technology fields, such as consumer electronics, telecommunications, computers, networking, optics, audio processing, video-processing, and semiconductors. His most significant activity since 1993 has been working on patent pools.

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Ken and his group have provided the following services:

Patent Evaluation and Review:

We have an extensive practice related to infringement and validity analyses of patents. In particular, we study patents submitted by companies and compare them to relevant technical standards to determine whether or not the submitted patents are infringed when implementing the respective standard.

Patent Licensing:

We have unique patent licensing experience, having worked on the most complicated patent licensing programs ever undertaken. In particular, we counsel clients about the infringement by potential licensees of patents and participate in discussions with potential licensees to explain why a license for particular patents is needed. We also have assisted in the negotiation and formation of patent pools and the successful signing of licensees to pool licenses, resulting in the collection of billions of dollars in royalties.

Competition Law:

We have vast experience in competition law as it relates to patent licensing and patent exploitation. In particular, we have appeared before the EU Director General for Competition as well as the U.S. Department of Justice Antitrust Division in connection with patent pools. We have made such appearances both to assist in obtaining a favorable negative clearance letter/business review letter, as well as to answer questions in conjunction with an investigation of a pool license by the respective regulatory authority.

Patent Litigation:

We have significant patent litigation experience in both the U.S. and in other countries such as Germany and the UK, especially in cases where we represented multiple parties. In particular, we have assisted groups of multiple parties in over 15 litigations in the U.S., the UK, Germany and France. We have successfully assisted licensors in enforcing their patents, including obtaining favorable judgments and settlements.

Our Patent Practice has conducted independent patent evaluations for the patent pools listed below. For all of these pools, we are responsible for conducting evaluations to determine whether patents are essential to a particular technical standard.

Video Compression:

  • MPEG-2
  • MPEG-4 Visual    
  • MPEG AVC (H.264)
  • VC-1

Audio Compression/Coding:

  • Dolby AC-3
  • MPEG-1 Audio (Layers 1, 2 & 3)
  • MPEG-2 Audio   
  • MPEG Audio 7.1 channel augmentation
  • LPCM
  • MLP (Meridian Lossless Packing) / PPCM (Packed Pulse Code Modulation)
  • DTS

Transport of Digital Signals for Simultaneous Reproduction:

  • MPEG-2 Systems
  • MPEG-4 Systems

Optical Disc:

  • CD, CD-R & CD-RW
  • SACD
  • CD-MRW, DVD+MRW (Mount Rainier)
  • BD-RO, BD-R, BD-RE (Blu-ray Disc)
  • HD DVD

Wireless Transmission (Terrestrial Digital Broadcast, Mobile Phone, Electronic Product Code Tagging):

  • DVB-T
  • DVB-H
  • ATSC 
  • WiMAX (IEEE 802.16-2004, 802.16e-2005)
  • EPCglobal Inc. Generation 1 and Generation 2 UHF RFID
  • ISO IS 18000-6

Computer Peripheral/Consumer Appliance Networking:

  • IEEE 1394, IEEE 1394a, IEEE 1394b, IEC 61883-1
  • HAVi (Home Audio Video Interoperability)
  • IEC 958 Digital Audio Interface for DVD-Video

In addition, below are recent representations in patent pool licensing:

  • MPEG LA L.L.C. – We assist MPEG LA by evaluating patents, negotiating and drafting license agreements and documents for forming patent pools, counseling on competition issues and patent litigation for the following pools and pooling programs under development: MPEG-2 Video, MPEG-2 Systems, MPEG-4 Visual, IEEE 1394, AVC/H.264, VC-1, DRM, ATSC, DVB-H, Blu-ray Disc and HD DVD
  • 4C DVD – We assist 4C DVD by evaluating patents for the following pools: DVD-ROM, DVD-R, DVD-RW, DVD-RAM, DVD-Video, DVD-VR, SACD, DVD+R and DVD+RW
  • 6C DVD – We assist 6C DVD Patent Pool by evaluating patents for the following pools: DVD-ROM, DVD-R, DVD-RW, DVD-RAM, DVD-Video, DVD-Audio and DVD-VR
  • UHF RFID Consortium – We assist the counsel to the UHF RFID Consortium by evaluating patents for the EPCglobal Inc. standards pertaining to UHF RFID
  • Open Patent Alliance – We assist the Open Patent Alliance by evaluating patents for the WiMAX Forum Mobile System Profile