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Charles R. Macedo, Partner with Amster, Rothsteinm & Ebenstein LLP, a physicist by training, litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation and appellate work. Companies and individuals from a wide range of industriPes turn to him to develop offensive and defensive strategies for the development and enforcement of their patent and trademark portfolios.
Fluent in technical jargon spoken by inventors and clients, patentese spoken at the PTO, legalese spoken by courts and attorneys, business jargon spoken by management, and plain English, he seeks to translate complex subject matter into terms all can understand.
The author of The Corporate Insider’s Guide to U.S. Patent Practice, Charley has been cited as an authority on intellectual property issues by the Wall Street Journal, Dow Jones, BNA, Bloomberg, Inside Counsel, Managing Intellectual Property, Technology Transfer Tactics, IP Law 360, JIPLP and other media.
Charley’s patent experience encompasses a broad range of industries and products including Internet, e-commerce, content delivery and computer-enabled inventions; financial services, transaction processing, electronic wallets and virtual or synthetic currency, including Bitcoins and all other Alt-coins; Software-As-A-Service; social media; semiconductor and photomasks; green energy and power, including wind generators and batteries; construction materials and structures; life sciences; and apparel, to name a few.
Charley also has enforced and defended against trademark assertions and/or opposition proceedings for financial service providers, casinos and resorts, non-profit organizations, celebrities; cosmetic companies, luxury retailers of designer handbags and retail chains. He also advises clients on IP contracts, licensing, confidentiality agreements, terms of services and IP acquisitions and transfers.
By identifying vulnerabilities and considering variations on design concepts, Charley helps clients develop strategies to maximize protection and prevent infringement challenges. He frequently serves as special counsel to companies seeking an IP strategy, not just a patent; to IP holders in anticipation of litigation and as coordinating counsel for multiple law firms.
Charley is consistently at the forefront of complex and emerging patent issues in the financial services and transaction processing industries. Clients ranging from international banks, broker dealers and new business ventures call on him to develop patent strategies, prepare patents, assert rights and defend against infringement claims. His work includes developing and implementing patent strategies associated with such cutting edge financial innovations like bitcoins and other synthetic currency or math-based assets.
His experience includes successfully defending the Discover Card division of Morgan Stanley from one of the earliest business method patent assertions, and leading the team to implement and enforce the deposit sweep patent portfolio for Island Intellectual Property LLC. Charles has also helped clients implementing insurance related products seek patent and other intellectual property protection.
Charley’s experience before the Patent Trial and Appeals Board and its predecessor Board of Patent Appeals and Interferences, including acting as leading counsel in inter partes review and covered business method proceedings, as well as advising and analyzing in the background. He also has represented patent owners in ex parte appeals, including reversals of obviousness rejections in Ex parte Buarque de Macedo.
Charley writes prolifically and lectures regularly as he tracks and analyzes in real time the most important developments affecting IP strategy and litigation.
As Co-Chair of the Amicus Committee of the New York Intellectual Property Law Association, Charley has been principal counsel or additional counsel on amicus briefs in some of the leading patent cases of recent years, including Cuozzo (at Federal Circuit en banc petition, Supreme Court petition for certiorari and merits brief stage), Highmark and Octane (at the Supreme Court), Kimble v. Marvel (at the Supreme Court), Mayo v. Prometheus (at the Supreme Court), Association of Molecular Pathology v. Myriad Genetics Inc. (at the Supreme Court and the Federal Circuit), CLS Bank Int’l v. Alice (at the Federal Circuit en banc and at the Supreme Court in the petition and merits brief stage), and Akamai (at the Federal Circuit on remand). His appellate experience also includes petitions for mandamus, for rehearing before the U.S. Court of Appeals for the Federal Circuit and for certiorari to the U.S. Supreme Court on behalf of various clients.
Charley holds bachelors and masters degrees in physics from The Catholic University of America and a law degree from Columbia Law School, all with honors. He was the sole law clerk to Hon. Daniel M. Friedman of the U.S. Court of Appeals for the Federal Circuit from 1989 to1990.
The recipient of the prestigious AIPLA Robert C. Watson Award, Charley has been named to Super Lawyers, IP Stars and Million Dollar Verdict. He also was a member of the Editorial Board for the American Intellectual Property Law Association Quarterly Journal and currently serves on the Editorial Board for Journal of Intellectual Property Law and Practice published by Oxford University Press.
On April 9, the New York Intellectual Property Law Association (NYIPLA) filed an amicus brief in Ericsson Inc. v. Samsung Electronics Co., Ltd., No. 2021-1565, urging a panel of the U.S. Court of Appeals for the Federal Circuit to balance U.S. interests in adjudicating U.S. patent rights against the rule of comity, with respect to an order by a Chinese court restricting the litigation of certain U.S. patents in U.S. courts. Senator Thom Tillis (R-NC), Judge Paul Michel and former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu also filed an amicus brief in the case on the same day in support of Ericsson…. Although the NYIPLA did not take a position on the exact scope and content of Judge Gilstrap’s order, it filed an amicus brief to highlight our country’s “strong policy interest in allowing U.S. patent rights to be adjudicated in U.S. courts” and to point out that “[a]llowing China to exercise exclusive dominion over U.S. patent rights and royalty rates and to preclude enforcement of U.S. patent rights within the United States would cause a severe reduction in the value of U.S. patents and jeopardize the very underpinnings of the U.S. patent system.”
The U.S. Supreme Court has agreed to hear, on March 1, 2021, whether administrative patent judges (APJs) of the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) are “inferior” officers properly appointed under the Appointments Clause of the U.S. Constitution (U.S. Const., art. II, § 2, cl. 2), and, if not, whether the “fix” by the Federal Circuit in Arthrex v. Smith & Nephew, 941 F.3d 1320 (Fed. Cir. 2019) worked. On February 25, 2021, the New York Intellectual Property Law Association (NYIPLA), will be presenting a special webinar titled “Getting Ready for Arthrex Oral Arguments,” which will summarize the issues presented and include presentations by representative amici on their respective positions.
On January 25, 2021, the New York Intellectual Property Law Association (NYIPLA) filed an amicus brief urging the U.S. Supreme Court to grant the writ of certiorari in American Axle & Manufacturing Co. Inc. v. Neapco Holdings LLC, No. 20-891. The brief argues that the American Axle case is factually very similar to Diamond v. Diehr, 450 U.S. 175, 187 (1981), which “recognized that claims, including a calculation based on the Arrhenius equation as part of larger process for curing rubber, were patent eligible.”
On December 2, eComp Consultants (eComp) filed an amicus brief urging the U.S. Supreme Court to find Administrative Patent Judges (APJs) of the Patent Trial and Appeal Board (PTAB) in U.S. v. Arthrex, Inc., Nos. 19-1434/-1452/-1458. In its brief, eComp argues that the U.S. Supreme Court should reverse the decision of the Federal Circuit and confirm that APJs of the PTAB are merely inferior officers of the United States who were, therefore, constitutionally appointed. eComp’s Amicus Brief clarifies the errors in the Federal Circuit’s decision.