Software & Business Methods

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Software is no longer just a tool of science and engineering. It is ubiquitous and necessary in virtually every field of endeavor, from telecommunications, robotics, bioinformatics, and gaming to e-commerce, marketing, and banking.

Expertise in Software and Business

In addition to having graduate and Ph.D. level technical backgrounds in computer science, electrical and computer engineering, mathematics, physics, business, finance, management, and other related fields, many of our attorneys have years of practical experience in the engineering and management fields. As a firm, we have vast industry experience with software at all levels, from low-level machine code to high-level code that runs Internet-based technologies, engineering, database, and financial systems. Our attorneys have been managers, executives, and have run their own businesses.

As a result, MBHB approaches patent law from the perspective of clients.

Wide Recognition

Additionally, we are internationally recognized as experts in the field of software and business method patents. Our attorneys have written numerous articles on these subjects, as well as hosted webinars and presented at conferences organized by legal associations, business organizations, and academic institutions. Not only do we practice the law, but we help other attorneys and business managers improve their practices.

Our Practice

We conduct patent searching, prosecution, opinion work, litigation, licensing, and various types of post-grant procedures including Post-Grant Reviews (PGR), Inter Partes Reviews (IPRs) and Covered Business Method (CBM) reviews. We also have expertise in software licenses, trademarks, copyrights, and trade secret issues.

As a result, when evaluating our clients’ intellectual property, we consider factors such as software development speed and version update timeline, ease of copying, ease of identifying infringers, and changes in industry trends with respect to use of software. We advise our clients on how to best protect their software through patents, copyrights, and trade secrets, and we guide our clients around existing intellectual property owned by others. In addition, we assist our clients’ efforts to monetize their investments by negotiating and drafting licensing and technology transfer agreements.

Ahead of the Curve

Following the U.S. Supreme Court’s Alice Corp. v. CLS Bank International (2014) decision, the patentable subject matter requirements for software and business methods have changed. Our strategies for protecting our clients’ software and business method inventions have evolved accordingly. But rather than merely reacting to changes in the law, we employ foresight so that our techniques result in patents that will be enforceable not just on the day of issuance, but years down the road as well.

Specific Experience

Our attorneys have drafted patent applications and represented clients in litigation involving telecommunications, mobile applications, machine learning, location-based services, web-based services, image processing, data compression, real-time operating systems, graphical user interfaces, databases, gaming, compression, encryption and security, microprocessor design, programming languages, insurance products, annuities, customized investing, diagnostic methods, remote monitoring, robotics, medical informatics, online marketing, voice over IP, and audio/video streaming.

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Master Patent Agent
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Senior Patent Agent
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Patent Agent
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Senior Patent Agent
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Patent Agent
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Partner
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Upcoming Events

March 7, 2017
MBHB Partner Dr. Emily Miao is a Featured Presenter
March 14, 2017
MBHB Partners Dr. Andrew Williams and James Lovsin Are the Featured Presenters

Past Event

February 22, 2017
January 19, 2017
MBHB Partners Dr. Michael Borella, Dr. Kevin Noonan and Dr. Donald Zuhn Are Featured Presenters
January 17, 2017
MBHB Partner Kirsten Thomson Is a Featured Presenter
November 15, 2016
November 8, 2016
MBHB Partner Dr. Kevin Noonan Is a Featured Co-Speaker

Publications

February 22, 2017 (snippets Alert)
MBHB snippets Alert - February 22, 2017

In an opinion by Justice Sotomayor, the Supreme Court today reversed the Federal Circuit's decision in Life Tech. Corp. v. Promega Corp. involving the proper scope of infringement under 35 U.S.C. § 271(f)(1). This provision provides infringement for exporting "all or a substantial portion of the components of a patented invention," and the Court's decision involved whether exporting only one component was enough for infringement liability.
Fall 2016 (snippets)
In a highly publicized decision of over a year ago, Judge Swain of the U.S. District Court of the Southern District of New York ruled in favor of the luxury retailer Tiffany and Co., deciding that Costco Wholesale Corp. willfully infringed Tiffany’s trademark. Judge Swain’s initial ruling against Costco allowed Tiffany to take Costco before a jury to seek damages, including recovery of Costco’s profits from the sale of the diamond rings, statutory damages, and punitive damages. After several delays, the jury finally met at the end of September for “Phase I” of the trial during which they decided (1) the amount of Costco’s profits and statutory damages under the Federal Lanham Act, and (2) whether Tiffany was entitled to punitive damages.
Fall 2016 (snippets)
The Trans-Pacific Partnership was the latest in a series of multination international agreements aimed at reducing trade barriers and promoting global free trade. However, the subject matter scope of this agreement and the secrecy with which it was negotiated have engendered deep suspicions from a variety of groups regarding whether its goal is truly free trade or whether there are more nefarious motivations behind it. And with the election of Donald Trump, these efforts have apparently amounted to nothing.
Fall 2016 (snippets)
Since the Supreme Court decided Alice Corp. v. CLS Bank Int’l in 2014, patent practitioners and the courts alike have struggled to find clarity in the patent eligibility framework of 35 U.S.C. § 101. For the Federal Circuit in particular, applying the two-step framework set forth in Mayo v. Prometheus and Alice with any consistency has proven difficult, as the lines between abstract and non-abstract ideas, between step one and step two of the framework, and between eligibility (§ 101) and patentability (§§ 102, 103, or 112) have grown fainter.
December 6, 2016 (snippets Alert)
MBHB snippets Alert - December 6, 2016

On December 6, 2016, the Supreme Court ruled unanimously, in an opinion by Justice Sotomayor, that an award of total profits for infringing a design patent need not be calculated based only on the end product sold to an ordinary consumer. More particularly, in the case of a multicomponent product, the damages award may be calculated based on subcomponents of the end product. In Samsung v. Apple, the Supreme Court applied this rule to reverse Apple’s $400 million damages award against Samsung.
Summer 2016 (snippets)
The near-simultaneous codification of trade secret-related standards on both sides of the Atlantic reflects the increased importance of trade secrets in global economies. A driving force behind the reform in both the US and the EU was a desire to harmonize laws protecting trade secrets.
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