Professionals
Romulo H. Delmendo
T: 571.765.7715
Professional Profile
Romulo Delmendo
joined the firm with over 30 years of extensive patent experience, the last 20
of which were as an Administrative Patent Judge (APJ) in the Patent Trial and
Appeal Board (PTAB), U.S. Patent and Trademark Office. He previously worked as: (i) a patent
attorney in firm, corporate, and government settings; (ii) a Legal Advisor in
the PTO’s Special Program Law Office; (ii) a Primary Examiner in Group 1500
(now part of Technology Center 1700) responsible for applications in the
polymer arts; and (iv) an Application/Sales Engineer at Pall Trincor
Corporation, a wholly-owned subsidiary of Pall Corporation, specializing in
pressure swing adsorption and ultrafiltration equipment.
As an APJ, Mr.
Delmendo participated in thousands of ex parte and inter partes
appeals and proceedings, including interferences and reexaminations of
high-profile patents, which provided him with invaluable insights and knowledge
on: (i) drafting and prosecuting patent applications for the broadest possible
protection that would stand up to scrutiny and (ii) attacking or defending
patents effectively and reliably. As a
result, he is able and ready to provide outstanding counseling and service to
clients.
Representative
cases from his representation of patent applicants and principal authorship as
an APJ include:
•
Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d
1364 (Fed. Cir. 2011) (upholding validity); 537 F.3d 1357 (Fed.
Cir. 2008) (upholding enforceability), cert. denied, 129 S. Ct. 1595 (2009).
•
Ex parte Baxter Int’l Co., Inc., 2010 WL 1048980
(BPAI 2010), aff’d, In re Baxter Int’l, Inc., 678 F.3d 1357 (Fed. Cir.
2012), reh’g denied, 698 F.3d 1349 (Fed. Cir. 2012) (en banc)
•
Shimano, Inc. v. MBI Co., Ltd., Appeal
2011-010922 (BPAI 2011), aff’d, Shimano, Inc. v. Rea, 2013 WL 1789562,
527 Fed. Appx. 1002 (Fed. Cir. 2013)
•
Ex parte Klopfenstein, Appeal No.
2003-0641 (BPAI 2003), aff'd, In re Klopfenstein. 380 F.3d 1345 (Fed.
Cir. 2004)
•
Ex parte Bigio, Appeal 2002-0967 (BPAI 2003), aff’d, In
re Bigio, 381 F.3d 1320 (Fed. Cir. 2004)
Education
Mr. Delmendo holds
a Bachelor of Engineering (Chemical Engineering) degree from Stevens Institute
of Technology and a Juris Doctor degree from the Catholic University of
America.
Memberships
Mr. Delmendo is a
member of the Virginia and District of Columbia bars and is registered to
practice before the PTO.
Language
Mr. Delmendo was born and raised in Seoul, Korea and is fluent in the Korean language.