Counseling

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The most important service we provide to our clients is advice, along with the skills to implement it. We counsel clients on the management and development of their intellectual property assets, advising clients on issues of patent validity, infringement, and the introduction of new products. Our expertise in business consulting and patent law has been a valuable resource for clients in e-commerce, finance, and other fields.

Our creative, cost-effective strategies are designed to help our clients achieve specific business objectives as well as further long-term business goals. We help establish and maintain effective programs for identifying and patenting key inventions. We also offer strategic advice on the development of patent and trademark portfolios and the exploitation of innovations through licensing. We evaluate potential litigation risks and suggest strategies for avoiding litigation, and we issue opinions regarding the scope, validity, and enforceability of patents and patent portfolios. At MBHB, we also provide advice when assessing the likely outcomes of litigation and in acquisition-related due diligence investigations.

The high-level education and experience earned by our attorneys gives us the skill and industry knowledge we need to help our clients make the decisions that are best for their business, from the beginning.

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Associate
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Patent Agent
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Partner
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F: 312.913.0002

Upcoming Events

August 19, 2014
MBHB Attorneys Rory Shea and Michael Borella, Ph.D. Are the Featured Co-Presenters
September 11-12, 2014
Five MBHB Partners Are Featured Presenters at this PLI-Sponsored Seminar

Past Event

July 9, 2014
MBHB Partners Grantland Drutchas and Donald Zuhn, Ph.D. Are the Featured Co-Presenters
July 2, 2014
MBHB Partners Lawrence Aaronson, Michael Borella and Grantland Drutchas Are Featured Presenters at this PLI-Sponsored Webinar
June 25, 2014
MBHB Partner Dr. Donald Zuhn is the Featured Moderator at this BIO 2014 Session
June 12, 2014
MBHB Partner Dr. Andrew Williams is the Featured Moderator at this ABA Sponsored Roundtable Event
June 10, 2014
MBHB Partner Paul Tully Is a Featured Presenter at this ACI-Sponsored Event

Publications

June 19, 2014 (snippets Alert)
MBHB snippets Alert - June 19, 2014

In the U.S. Supreme Court’s decision today in Alice Corp. v. CLS Bank International, the Court affirmed the invalidity of Alice’s patents for computer-implemented methods of reducing settlement risk. This case reached the high court after a severely split Federal Circuit could not agree whether language of the claims met the patent-eligibility requirements of 35 U.S.C. § 101. At the heart of this case was the Federal Circuit’s confusion over the impact of the Court’s 2012 decision, Mayo Collaborative Services v. Prometheus Laboratories, Inc.

June 2, 2014 (snippets Alert)
MBHB snippets Alert - June 2, 2014

In the U.S. Supreme Court’s decision today in Limelight Networks, Inc. v. Akamai Technologies, Inc., the Supreme Court reversed the Federal Circuit's en banc holding that a defendant need not perform all of the steps of a claim to infringe where it performs some and induces third parties to perform the rest.
June 2, 2014 (snippets Alert)
MBHB snippets Alert - June 2, 2014

In today’s decision, the U.S. Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc. clarified the scope of definiteness required to fulfill the requirement that the patent claims particularly point out and distinctly claim the subject matter which the applicant regards as the invention. In Nautilus, the U.S. Supreme Court unanimously rejected the “insolubly ambiguous” standard previously set out by the Federal Circuit.
May 19, 2014 (snippets Alert)

MBHB snippets Alert - May 19, 2014

Today in Petrella v. Metro-Goldwyn-Mayer, Inc. (case number 12-1315), the U.S. Supreme Court ruled that the doctrine of laches could not be invoked to bar a copyright claim that was brought within the statutorily allowed three-year window from the particular act of infringement. In Petrella, the Court reversed the decision of the Ninth Circuit Court of Appeals, which had affirmed the district court’s summary dismissal of the suit based on laches. Resolving a circuit split at the appellate level, the Supreme Court held that the lower courts erred in “failing to recognize that the copyright statute of limitations, §507(b), itself takes account of delay.” Petrella, slip op. at 11. The opinion emphasized that the Supreme Court has “never applied laches to bar in their entirety claims for discrete wrongs occurring within a federally prescribed limitations period.” Id. at 14-15. Rather, the Court stated that laches is a “gap-filling, not legislation-overriding,” measure that is appropriate only when there is not an explicit statute of limitations. Id at 14.

Spring 2014 (snippets)
On March 4, in a memorandum issued to the Patent Examining Corps by Deputy Commissioner for Patent Examination Policy Andrew Hirshfeld, the U.S. Patent and Trademark Office (“USPTO”) implemented a new procedure for determining the subject matter eligibility of all claims involving laws of nature/natural principles, natural phenomena, and/or natural products under 35 U.S.C. § 101. The memorandum, entitled “Guidance For Determining Subject Matter Eligibility Of Claims Reciting Or Involving Laws of Nature, Natural Phenomena, & Natural Products” (the “Guidance Memo”), was intended to assist examiners on this issue in view of the Supreme Court's decisions in Association for Molecular Pathology v. Myriad Genetics, Inc. and Mayo Collaborative Services v. Prometheus Laboratories, Inc. On March 19, the USPTO supplemented the Guidance Memo with additional training materials for patent examiners to help implement the Guidance Memo, which took the form of a presentation comprising nearly one hundred slides (the “Training Materials”).
Spring 2014 (snippets)

Trademark protection is very important in the fashion industry. The ability to protect certain logos and design features may determine the success of a fashion designer’s business. Thus, it is crucial to understand how to protect your fashion trademarks and trade dress.

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