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Concentration Patent, copyright, and trade secret litigation, licensing and procurement
Summary Robert Scheinfeld is the head of the intellectual property department in the firm's New York office and serves on the firm's executive committee. For twenty-five years, he has practiced intellectual property law and litigation almost exclusively, representing local and international companies as plaintiffs and defendants in patent, copyright and trade secret misappropriation disputes and lawsuits across the country. Mr. Scheinfeld's litigation representations have resulted in numerous favorable published and unpublished district court and Federal Circuit decisions.
Mr. Scheinfeld's technical expertise is diverse and his representations involve a broad range of fields in the high technology industry, including electronics, data processing and management software, telecommunications, smart cards, electronic commerce and flash memory.
Since 1995, Mr. Scheinfeld has been the bimonthly patent and trademark columnist for the New York Law Journal, and has published over fifty patent and trademark-related articles addressing the current hot topics of the day. Most of these articles are now accessible online and some are identified below.
From 1991 to 1997, Mr. Scheinfeld also taught patent law as an adjunct professor of law in New York City. He is a frequent speaker on patent-related topics ranging from opinions of counsel in patent cases to business method patents.
Representative Engagements
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MasterCard International Incorporated – complete range of exclusive patent representation, including all patent litigation, as lead trial counsel, and prosecution since 1986; development and management of a worldwide patent portfolio directed to payment processing systems, electronic commerce, security encryption techniques, and RFID, among many other innovations; representation as amicus curiae in the landmark State Street Bank business methods patent case (47USPQ2d 1596)
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Fuji Photo Film Co., Ltd. – representation as lead trial counsel in numerous patent lawsuits over an extended period of time, involving patents variously directed to autofocus, autoflash, semiconductors, camcorders, flash memory, and digital cameras
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Hitachi, Ltd. – representation as lead trial counsel as well as counsel involving licensing and patent clearance studies covering technologies ranging from LCDs and proton beam cancer treatment/therapy centers to smart cards
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Renesas Technology Corp – representation as lead trial counsel in litigation against Honeywell International related to LCD display driver technology
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IMS Health, Incorporated – complete range of intellectual property representation, including litigation in software-related cases, and development and management of a worldwide patent portfolio directed to computer systems, software, and methodologies related to health care, pharmaceutical, and prescription information services
- Intellectual property protection, enforcement, or procurement for such clients as Starwood Hotels and Resorts (including the Sheraton and Westin), JP Morgan Chase, National Economic Research Associates, Inc., Nexstar Financial Corporation, Lanard Toys Ltd., DiMarzio Inc., and L'Oreal S.A.; published opinions include 32 USPQ2d 1479 (Fed. Cir. 1994), 31 USPQ2d 1062 (Fed. Cir. 1994), 18 USPQ2d 1807 (E.D.Pa. 1991), 15 USPQ2d 1076 (Fed. Cir. 1990)
Publications, Speeches and Presentations Publications
Mr. Scheinfeld is a bi-monthly columnist at the New York Law Journal. For a complete list of his articles please refer to the "Publications" section of our Web site.
- "Patent and Trademark Law," New York Law Journal, January 2010
- "The Muddled Law of Personal Jurisdiction in the Internet Age," New York Law Journal, November 2009
- "Written Description: How Much Does an Inventor Have to Disclose?" New York Law Journal, September 2009
- "Search Engine Keywords: Likely to Cause Confusion?" New York Law Journal, July 2009
- "The Joint Infringement Defense Takes Flight," New York Law Journal, May 2009
- "Seeking Relief From International Trade Commission After 'Kyocera'," New York Law Journal, March 2009
- "Could Federal Circuit Ruling End East Texas' Reign as Favored Venue?", New York Law Journal, January 2009
- "Federal Circuit En Banc: 'Egyptian Goddess', 'Bilski'," New York Law Journal, November 2008
- "The Power of 'KSR'," New York Law Journal, September 2008
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"Standards Involvement Does Not Avert Patent Execution," New York Law Journal, May 2008
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"Standards Involvement Trumps Patent Enforcement," New York Law Journal, March 2008
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"Design Patents: Will 'Point-of-Novelty Test Survive?" New York Law Journal, January 2008
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"Willful Infringement: The Federal Circuit Overrules Itself," New York Law Journal, September 2007
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"Patent Reform: A Status Report," New York Law Journal, July 2007
- "Key Decisions From Supreme Court," New York Law Journal, May 2007
- "Five Months With Trademark Dilution Revision Act," New York Law Journal, March 2007
- "Courts: Licensees May Sue, 'Inducement' Clarified," New York Law Journal, January 2007
- "Trademark Dilution Act: An Evolutionary Shift in Focus," New York Law Journal, November 2006
- "The Roberts Supreme Court Takes on Patent Cases," New York Law Journal, September 2006
- "Considering Accused Products in Determining a Patent's Scope," New York Law Journal, May 2006
- "Licensee's Ability to Challenge Patent Validity," New York Law Journal, March 2006
- "Supreme Court to Determine the Propriety of Injunctions," New York Law Journal, January 2006
Speeches and Presentations
- "Opinions of Counsel in Business Method Cases," Business Method Patents: How to Protect Your Clients' Interests, Practising Law Institute, New York, February 2002
- "Opinions of Counsel," Patenting the New Business Method: Building Fences in Cyberspace, Practising Law Institute, New York, February 2001
- "The Impact of State Street on Your Business: Building Fences in Cyberspace," Practising Law Institute, New York, February 2000
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