Charley Macedo Image

Charley Macedo

Partner

Amster, Rothsteinm & Ebenstein LLP

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.

Recent Articles by Charley Macedo

NYIPLA Amicus Brief in Ericsson v. Samsung Advocates the Adjudication of U.S. Patent Rights by U.S. Courts

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.”

Getting Ready for Arthrex: What the Amici Are Saying

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.

NYIPLA Amicus Brief in American Axle Urges Supreme Court to Return to Its Precedent in Diehr

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.”

Amicus eComp Consultants Urges Supreme Court to Deem PTAB APJs ‘Inferior’ Officers in Arthrex

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. 

Askeladden Brief Asks SCOTUS to Grant U.S. Government’s Petition to Reconsider Whether PTAB APJs Are Principal Officers Under the Appointments Clause

On July 29, Askeladden LLC filed an amicus brief in support of the U.S. Government’s combined petition for a writ of certiorari in U.S. v. Arthrex, Inc., No. 19-1434. In particular, Askeladden asks the Supreme Court to accept the petition and address the threshold question raised by the U.S. Government: whether, for purposes of the Appointments Clause, U.S. Const. art. II, § 2, Cl. 2, administrative patent judges (APJs) of the Patent Trial and Appeals Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) are “principal officers” who must be appointed by the President with the Senate’s advice and consent, or “inferior officers” whose appointment Congress has permissibly vested in a department head.

Navigating Bitcoin and Blockchain for Digital Businesses: Key Use Cases

Today, blockchain projects are proceeding in nearly every major industry and occur in more than 140 countries. According to blockchain IP landscape research by Perception Partners, over the past three years, the compound annual growth rate (CAGR) of patent families publishing in the United States, Europe, Patent Cooperation Treaty (PCT), China, Japan and Korea is about 23%. The space has more than 13,000 global competitors of every size with nearly 23,000 inventors or authors disclosing or researching blockchain innovations. Much has been written about Bitcoin and blockchain technology, including a prior article in which we provided an overview on “The Bitcoin Network, Blockchain Technology and Altcoin Futures.”  To keep pace with the evolving nature of blockchain intellectual property and technology, below we provide some sample use cases of how blockchain innovations are already being leveraged in commerce and likely to be exploited in the near future.

NYIPLA Urges Supreme Court Not to Award USPTO Staff Attorney Salaries as ‘Expenses’ in Patent Appeals to ED of Virginia

On June 25, 2019, the New York Intellectual Property Association (NYIPLA) filed an Amicus Brief in support of the Respondent in Peter v. NantKwest, Inc., No. 18-801, pending before the Supreme Court.  NantKwest raises the issue of whether patent applicants who are dissatisfied with U.S. Patent and Trademark Office (USPTO) decisions and subsequently appeal to the U.S. District Court of the Eastern District of Virginia must pay USPTO staff attorney salaries as part of “[a]ll the expenses of the proceedings” under 35 U.S.C. Section 145, which allows applicants to pursue a civil action against decisions of the USPTO Director.

In Support of the Right of Dissatisfied Parties to Appeal Adverse IPR Decisions

On January 11th, Askeladden LLC (Askeladden) filed an amicus brief in support of the Supreme Court accepting certiorari from JTEKT Corp. v. GKN Automotive Ltd., No. 2017-1828 (Fed. Cir. 2018). This case raises the important question of whether the U.S. Court of Appeals for the Federal Circuit can refuse to hear an appeal by a non-defendant petitioner from an adverse final written decision in an inter partes review (IPR) proceeding on the basis of a lack of a patent-inflicted injury-in-fact, even though Congress has statutorily created the right for “dissatisfied” parties to appeal to the Federal Circuit. 35 U.S.C. § 319.

Ultimately, the panel held that JTEKT failed to establish an actual injury sufficient to confer Article III standing because “the[] declarations [did] not establish that [JTEKT’s] planned product would create a substantial risk of infringing [the] patent or likely lead to charges of infringement[.]” Id. Further, the panel did not agree with JTEKT’s argument that the “creation of estoppel based on [JTEKT’s] participation in the IPR constitute[d] a separate, and independent, injury[.]” Id. Therefore, the appeal was dismissed.

According to the brief: “The issue raised is whether meeting the statutory requirements of Section 319 of Title 35 of the United States Code is an intangible injury-in-fact that is enough to meet the “case or controversy” requirements of Article III of the U.S. Constitution.”

Past Events with Charley Macedo

NYIPLA One-Day Patent CLE Seminar

November 15, 2018 @ 8:00 am - 5:00 pm EST