Maximilian R. Peterson, Ph.D.

Practice Areas

Dr. Peterson's practice focuses on a broad range of intellectual property matters, including strategic counseling, pre-litigation patent portfolio evaluation and analysis, defensive and offensive patent analysis, opinions of counsel, litigation counseling, and licensing and agreements. He advises clients in strategic enforcement planning as well as defensive matters aimed at minimizing legal liabilities. Dr. Peterson's practice also entails patent procurement, specifically, preparing and prosecuting patent applications in a broad range of technical areas. He advises clients on strategic patent procurement aimed at maximizing portfolio value and broadening its scope and coverage.

Professional Background

• Principal, Law Offices of Maximilian R. Peterson (2006-present)
• Partner, O'Keefe, Egan & Peterman, 2000-2006
• Associate Solicitor, Office of the Solicitor, U.S. Patent and Trademark Office, 1998-2000
• Associate, Arnold, White & Durkee, 1997-1998
• Law Clerk to the Honorable William C. Bryson, U.S. Court of Appeals for the Federal Circuit, 1996-1997
• Judicial Intern to the Honorable Wilson Cowen, U.S. Court of Appeals for the Federal Circuit, Spring 1995
• Advisory Engineer, 1992-1993; and Development Staff Member, 1990-1992, IBM Corporation

Dr. Peterson's legal experience encompasses various aspects of intellectual property law. During his career, he has represented clients in diverse areas, ranging from litigation at both trial and appellate levels to strategic defensive and offensive patent analysis, due diligence in connection with mergers and acquisitions, patent procurement, and settlements, negotiations, agreements, and licensing matters. Dr. Peterson has provided opinions of counsel relating to validity, freedom to operate, and infringement for both defensive and enforcement positions. He has prepared and prosecuted patent applications in a broad range of technical areas, such as semiconductors, computer software and hardware, optical devices, and telecommunications.

Before forming his present firm, Dr. Peterson was a partner at an intellectual property law firm, where his practice involved a wide range of intellectual property matters. His work encompassed strategic patent analysis (both offensive and defensive), licensing agreements, opinions of counsel, patent procurement, due diligence, and client counseling.

Previously, Dr. Peterson served as an Associate Solicitor at the Office of the Solicitor at the U.S. Patent and Trademark Office. There, he represented the Commissioner of Patents and Trademarks in a diverse range of matters, including appellate and trial-level litigation. As an appellate advocate, Dr. Peterson prepared and filed briefs and argued before the U.S. Court of Appeals for the Federal Circuit. He prepared and filed legal briefs in several federal district courts and argued before the U.S. District Court for the District of Columbia. Dr. Peterson counseled the Commissioner and other agency officials regarding treaties, administrative rulemaking, litigation strategy, and general legal issues. His role included representing the Office's employees in third-party depositions, representing the Office of Enrollment and Discipline in enforcement matters, and assisting the U.S. Department of Justice in preparing amicus curiae briefs in various appellate cases. He judged the Giles Rich Moot Court Competition at The George Washington University Law School.

Dr. Peterson worked during 1997-1998 as an associate at Arnold, White & Durkee, where he represented clients in intellectual property litigation matters involving both federal and state claims. He also prepared and prosecuted patent applications in various technical areas, counseled clients, and provided a number of infringement and validity opinions. During the same period, Dr. Peterson served as a judge in the Giles Rich Moot Court Competition at The University of Texas School of Law.

During 1996-1997, Dr. Peterson served as a judicial Law Clerk to the Honorable William C. Bryson at the U.S. Court of Appeals for the Federal Circuit. Also, during one semester of law school, he served as a judicial Intern to the Honorable Wilson Cowen at the U.S. Court of Appeals for the Federal Circuit. Dr. Peterson served as a consultant to several firms while attending law school. In that capacity, he analyzed patent defensive and offensive positions for high-tech clients.

Dr. Peterson has a strong technical background. Before joining the legal profession, he worked at IBM Corporation as an Advisory Engineer and a Development Staff Member. His research and development work spanned a broad range of topics from systems analysis to integrated circuit design. He conducted research in collaboration with The University of Arizona through an IBM Shared University-Resource Award. Dr. Peterson was active on several corporate committees, including an intellectual property committee.

While attending graduate school, Dr. Peterson worked as a technical consultant, where he designed various circuits and systems. He also served as both a research assistant and a teaching assistant, instructing various graduate and undergraduate courses, including a graduate-level laboratory in semiconductor processing and fabrication.

Education

Juris Doctor (J.D.) with high honors, The George Washington University Law School, 1996

• Order of the Coif
• Senior Managing Editor, The George Washington Law Review
• Dean's Fellow in Legal Research & Writing
• Corpus Juris Secundum Award in Criminal Law
• Honors in Legal Research & Writing and Oral Advocacy

Doctor of Philosophy (Ph.D.) in Electrical Engineering, with minor in Computer Science, The University of Minnesota, 1990

• Graduate School Physical Sciences Policy and Review Board Member
• Electrical Engineering Department Representative to the Council of Graduate Students
• Phi Kappa Phi

Bachelor of Electrical Engineering (B.E.E.) with high distinction, The University of Minnesota, 1986

• Tau Beta Pi
• Eta Kappa Nu
• The Golden Key National Honor Society
• 3M Corporation Merit Scholarship

Admissions

State Bar of Texas

U.S. Court of Appeals for the Federal Circuit

U.S. Court of Appeals for the Fourth Circuit

U.S. District Court for the Eastern District of Virginia

U.S. District Court for the Western District of Virginia

U.S. Court of Federal Claims

Registered to practice before the U.S. Patent and Trademark Office

Professional Affiliations

Giles Sutherland Rich American Inn of Court (1996-1997)

Vice-Chair, Institute of Electrical and Electronic Engineers, Southern Minnesota Section (1993)

Secretary, Institute of Electrical and Electronic Engineers, Southern Minnesota Section (1992)

Chair, Computer Society of the Institute of Electrical and Electronic Engineers, Tucson, AZ (1991)

Publications

Contributing author, 35 U.S.C. § 103: From Hotchkiss to Hand to Rich, the Obvious Patent Law Hall-of-Famers, 32 J. Marshall L. Rev. 442 (1999)

Note, Now You See It, Now You Don't: Was It a Patentable Machine or an Unpatentable Computer Program? On Principle and Expediency in Current Patent Law Doctrines Relating to Computer-Implemented Inventions, 64 Geo. Wash. L. Rev. 90 (1995)

Twelve journal and conference technical papers, including two best paper awards