Robert C Scheinfeld

March 22, 2006 | New York Law Journal

Robert C. Scheinfeld, a partner at Baker Botts, and Parker H. Bagley, a partner at Milbank Tweed, Hadley & McCloy, write that the Supreme Court last addressed a licensee's freedom to challenge a licensed patent in its 1969 landmark decision in Lear v. Adkins. Since Lear, however, the Federal Circuit has made clear that not every licensee in every circumstance has the right to challenge the validity of a patent.

By Robert C. Scheinfeld and Parker H. Bagley

8 minute read

March 26, 2008 | New York Law Journal

Parker H. Bagley, a partner at Milbank, Tweed, Hadley & McCloy, and Robert C. Scheinfeld, a partner at Baker Botts, review recent actions of the FTC against patent holders for engaging in unfair methods of competition and unfair acts or practices based on the promises or representations they made to standards organizations.

By Parker H. Bagley and Robert C. Scheinfeld

9 minute read

November 23, 2005 | New York Law Journal

Robert C. Scheinfeld, a partner at Baker Botts, and Parker H. Bagley, a partner at Milbank Tweed, Hadley & McCloy, write that the Board of Patent Appeals and Interferences issued a precedential opinion effectively eliminating the "technological arts" test that had been used by the Patent Office to reject patent applications claiming business methods not tied in any way to technology.

By Robert C. Scheinfeld and Parker H. Bagley

8 minute read

March 25, 2009 | New York Law Journal

Robert C. Scheinfeld, a partner at Baker Botts, and Parker H. Bagley, a partner at Goodwin Procter, write that the recent decision by the Federal Circuit in Kyocera Wireless Corp. v. Int'l Trade Comm'n changed the accepted wisdom regarding the commission's power to issue broad injunctive relief excluding infringing articles from importation into the United States. Although the decision's full ramifications are not readily apparent from its holding, the most significant effect has been the commission's reevaluation of its previously established analytical framework and requirements for awarding remedies. Thus, effectively managing litigations in the ITC will require an understanding of the ramifications of Kyocera and the ability to craft litigation strategies for responding to this changed - and still very unpredictable - landscape.

By Robert C. Scheinfeld and Parker H. Bagley

9 minute read

July 22, 2009 | New York Law Journal

Robert C. Scheinfeld, a partner at Baker Botts, and Parker H. Bagley, a partner at Goodwin Procter, write: "After Rescuecom, the Second Circuit has joined other courts in holding that the use of a trademarked phrase as a search keyword is a 'use in commerce.' Rescuecom further seems to suggest a similar willingness to permit claims against advertisers who purchase the keywords themselves, because arguably there is no reason to hold search engines and advertisers to different standards as to what constitutes 'use in commerce.'"

By Robert C. Scheinfeld and Parker H. Bagley

10 minute read

November 26, 2008 | New York Law Journal

Robert C. Scheinfeld, a partner at Baker Botts, and Parker H. Bagley, a partner at Goodwin Procter, write: It is unusual for the U.S. Court of Appeals for the Federal Circuit to issue en banc opinions. It is highly unusual for the court to issue two such opinions in close proximity. Two en banc opinions from the Federal Circuit within the last two months signify the court's effort to clarify and simplify two of its long-standing tests. Both cases seek to clarify a previously articulated test and reject the court's own multifaceted/alternative tests.

By Robert C. Scheinfeld and Parker H. Bagley

13 minute read

May 25, 2011 | New York Law Journal

In their Patent and Trademark Law column, Robert C. Scheinfeld of Baker Botts and Parker H. Bagley of Goodwin Procter discuss the Federal Circuit's implementation of the "two-step KSM analysis" in the recent Tivo v. EchoStar decision and how that ruling suggests that contempt proceedings may be more streamlined and focused, and that counsel and litigants will be sure to seek certainty regarding the language of an injunction order sooner rather than later.

By Robert C. Scheinfeld and Parker H. Bagley

10 minute read

July 20, 2005 | New York Law Journal

Robert C. Scheinfeld, a partner at Baker Botts, and Parker H. Bagley, a partner at Milbank Tweed, Hadley & McCloy, report that an en banc U.S. Court of Appeals for the Federal Circuit, although neither unanimously nor harmoniously, resolved what district courts should consider in determining the scope of U.S. patents.

By Robert C. Scheinfeld And Parker H. Bagley

11 minute read

October 04, 2005 | Legaltech News

Robert C. Scheinfeld, head of the intellectual property group at Baker Botts, and Parker H. Bagley, partner at Milbank Tweed, Hadley & McCloy, write that as technology companies expand their development, use and sale of complex software to all corners of the globe, it becomes extremely important to understand the boundaries of U.S. Patent Law. Three recent Federal Circuit cases address cross-border patent infringement and should be of special interest to today's innovators.

By Robert C. Scheinfeld and Parker H. Bagley

13 minute read

January 24, 2007 | New York Law Journal

Robert C. Scheinfeld, a partner at Baker Botts, and Parker H. Bagley, a partner at Milbank Tweed, Hadley & McCloy, analyze a recent U.S. Supreme Court decision which held that a licensee may challenge validity and infringement of a licensed patent while continuing to pay royalties to maintain its license, thereby insulating itself from possible damages and injunctive relief if it fails in its invalidity and noninfringement challenge. They also review a significant Federal Circuit decision.

By Robert C. Scheinfeld and Parker H. Bagley

13 minute read