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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Patent Agent
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Senior Patent Agent
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Patent Agent
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Partner
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Publications

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

Today in TC Heartland LLC v. Kraft Food Brands Grp. LLC, 581 U.S. ___ (2017), the Supreme Court reversed a long-standing practice permitting venue over domestic corporations to be had wherever the court had personal jurisdiction over the defendant. Now, however, “[a]s applied to domestic corporations, ‘reside[nce]’ in § 1400(b) refers only to the State of incorporation.” Id., p. 10.
March 21, 2017 (snippets Alert)
As was widely expected from the Justices’ positions at oral arguments, a nearly unanimous Supreme Court today struck down the patent laches doctrine in SCA Hygiene Prods. Aktiebolag, v. First Quality Baby Prods., LLC, 580 U.S. __ (March 21, 2017). In the opinion by Justice Alito, the Supreme Court applied the rationale of its own prior decision in Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), finding that the existence of a six-year statute of limitations in the Patent Act, 35 U.S.C. §286, precluded the application of laches. As such, “laches cannot be interposed as a defense against damages where the infringement occurred within the period prescribed by §286.”
Winter 2017 (snippets)
Owners of U.S. trademark registrations need to know about a few recent rule changes and be mindful of the changes and U.S. Patent and Trademark Office requirements whenever a declaration of use is due.
Winter 2017 (snippets)
Seeking to end years of little clarity on two key ethical issues for practitioners, the Patent Office has proposed two new rules of practice. The first rule would allow parties to invoke privilege in inter partes proceedings to prevent the disclosure of communications between clients and non-attorney patent agents. The second rule would change the duty of disclosure to comport with the standard set forth in the Therasense case. Based on the comments from the public, it appears likely that the Office will adopt the patent-agent privilege rule but go back for another round of changes to the duty of disclosure rule.
Winter 2017 (snippets)
Although the PTAB has instituted CBM trials for patents that do not facially qualify as business method patents, recent Federal Circuit decisions have required a more strict reading of the AIA statute in instituting CBM trials.
Winter 2017 (snippets)
In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes reviews (“IPRs”) and Covered Business Method patent reviews (“CBMs”) have been available since September 16, 2012, and their utilization since that time has exceeded expectations. A third mechanism, post-grant review (“PGR”), was also made available on that date, but because a PGR petition can only be filed for patents that were examined pursuant to the new First-Inventor-to-File scheme established by the AIA, it has not yet been significantly utilized. Here, we describe the IPR and PGR estoppel provisions of 35 U.S.C. §§ 315(e) and 325(e) and courts’ interpretations of those provisions thus far.
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