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    Edward M. Roney, IV

    Of Counsel
    Office: Raleigh
    Admissions: Illinois, North Carolina

    Biography

    Ed is Of Counsel in our Raleigh office and a member of the Intellectual Property and Litigation practice groups. Ed has a broad array of intellectual property legal experience including patent and trademark preparation, portfolio counseling, clearance, enforcement, litigation, post-grant proceedings, licensing agreements, and technology transactions. He represents companies ranging from start-ups to publicly traded Fortune 500 companies. Having founded and successfully sold an innovative telecommunications semiconductor company and patented many inventions himself, Ed brings a unique perspective to his IP practice.

    Ed’s patent experience spans all aspects of telecommunications, from physical layer signal processing and RF circuitry to higher-layer software protocols, networking, and information security. His experience also encompasses a wide variety of technologies including aerospace and defense, AI, neural networks and machine learning, blockchain, clean energy, cloud computing, consumer products, eCommerce, energy generation, information technology and Software-as-a-Service (SaaS), Internet of Things (IoT), manufacturing processes, medical and drug delivery devices, micro-electromechanical systems (MEMS), robotics, semiconductors, transportation, and water treatment systems.

    He works closely with clients to build standard-essential patent portfolios designed to withstand scrutiny in due diligence and litigation. Ed also provides analysis on patent validity and infringement issues, assists with patent and trademark clearance matters, conducts IP due diligence for transactions, and drafts inbound and outbound technology and software licenses.

    Additionally, Ed represents clients in intellectual property disputes and litigation, including post grant review (PGR) and inter partes review (IPR) proceedings before United States Patent and Trademark Office (USPTO). He has also successfully represented clients in litigation related to unfair competition practices, trademark infringement, and copyright infringement.

    Ed regularly writes and presents on patent law and telecommunications technology issues. He is the current managing editor of the American Bar Association’s Antitrust Issues in Intellectual Property Law publication. Ed has also represented numerous companies on various U.S. and international industry technical standards groups, including 3GPP, 3GPP2, ANSI, ETSI, and TIA/EIA.

    Prior to practicing law, Ed founded PrairieComm, Inc., a fabless semiconductor company providing baseband chips and software to leading cellular handset manufacturers. PrairieComm was recognized by Inc. Magazine in 2000 as one of the top 25 fastest growing companies in the U.S. In 2001, Ed was named by The Wall Street Journal to its ‘Unstrung 25’ list for his leadership in the wireless communications industry.

    Recognition & Honors

    • Unstrung 25, The Wall Street Journal, 2001
    • 2000 Inc. 500 Index, PrairieComm, No. 25, Inc. Magazine

    Associations

    • American Bar Association; Member
    • American Bar Association; Managing Editor, Antitrust Issues in Intellectual Property Law

    Court Admissions

    • United States Patent and Trademark Office
    • Northern District of Illinois
    • Eastern District of North Carolina

    Education

    • Purdue University; B.S., 1988
    • National Technological University; M.S., 1992
    • DePaul University College of Law; J.D. , 2008

    Reported opinions and published articles

    • Intellectual Property Client Alert – The Dog Days Are Over for Jack Daniel’s, June 2023
    • Intellectual Property Client Alert – Registration and Ownership of AI-Generated Works, Fall 2023