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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Of Counsel
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Upcoming Events

October 20, 2017
MBHB Partner Alison Baldwin Is a Featured Speaker
October 27, 2017
MBHB Partners Anthoula Pomrening and Marcus Thymian Are the Featured Speakers for this Program
November 3, 2017
MBHB Partner Dr. Andrew Williams Is a Featured Speaker
November 14, 2017
MBHB Partners James McCarthy and Anthoula Pomrening Are Featured Presenters

Past Event

October 17, 2017
MBHB Attorneys Grant Drutchas and Aaron Gin, Ph.D. Are Featured Presenters
October 15-17, 2017
MBHB Partner Bradley Hulbert Is a Featured Co-Speaker for this PRG-Sponsored Program
September 26, 2017
MBHB Partner Kevin Noonan, Ph.D. Featured Speaker at this IPO-Sponsored Webinar
September 22, 2017
MBHB Partner Paul Berghoff Is the Featured Speaker for this Program 
September 19, 2017
MBHB Partners Alison Baldwin and Paula Fritsch, Ph.D. Are Featured Presenters

Publications

October 5, 2017
MBHB snippets Alert - October 5, 2017

In Aqua Products Inc. v. Matal, a highly fractured en banc Federal Circuit determined that the PTAB, in ruling whether to allow claim amendments in an IPR proceeding, can no longer place the burden to establish the patentability of the amended claims on the patent owner. This should result in more claim amendments being allowed in such proceedings, and it also opens the possibility that more motions to amend will be filed. However, this decision is unlikely to be the panacea hoped for by patent owners.
September 22,2017 (snippets Alert)
In In re: Cray, Inc, No. 2017-129, the CAFC issued a writ of mandamus vacating Judge Gilstrap’s decision involving venue under 28 U.S.C. §1400(b) in Raytheon Co. v. Cray Inc., Case No. 15-cv-1554 (E.D. Texas). That earlier decision raised concerns over whether the Supreme Court’s venue holding in TC Heartland LLC v. Kraft Foods Group Brands LLC, 137 S. Ct. 1514 (2017), would be given full effect. Judge Gilstrap had applied a broad 4-factor test for finding whether a defendant such as Cray had a “regular and established place of business” in the Eastern District of Texas under §1400(b). Judge Gilstrap’s test had attracted significant attention, and posited the Eastern District of Texas against most other district courts in applying § 1400(b).
Summer 2017 (snippets)
In Water Splash v. Menon, the Supreme Court presents guidance for multinational plaintiffs and defendants charting the rarely tested waters of international service. Specifically, in determining that service by direct mailing is not expressly prohibited under the Hague Service Convention, the Court opened the flood gates for parties to attempt Convention-compliant service by direct mailing.
Summer 2017 (snippets)
On May 22, 2017, in TC Heartland LLC v. Kraft Foods Group Brands LLC, the Supreme Court reversed decades of expansive patent venue interpretation by the Federal Circuit. The ruling in TC Heartland immediately overturns long-standing “forum-shopping” practices and introduces a longer-term issue of defining “a regular and established place of business.”
Summer 2017 (snippets)
On May 11, 2017, the Defend Trade Secrets Act (DTSA) – the law that created a Federal cause of action for trade secret misappropriation – celebrated its first birthday. From the first year of enforcement, it appears that the DTSA got the balance right with some provisions, may need to be tweaked with others, and has yet to render clear results in some.
June 19, 2017 (snippets Alert)

This morning, in Matal v. Tam, previously Lee v. Tam, the Supreme Court handed down its most impactful interpretation of the disparagement clause of the Lanham Act to date by holding that at its intersection with the First Amendment, the disparagement clause violates the First Amendment’s Free Speech Clause.  

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