Concentration

Patent, copyright, and trade secret licensing and procurement, counseling, risk management, litigation, trial

Summary

Robert Scheinfeld serves on the firm's executive committee and is the head of the intellectual property section in the firm's New York office. For more than twenty-seven 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 Scheinfeld's litigation and trial representations have resulted in numerous favorable published and unpublished district court and Federal Circuit decisions.

Mr. Scheinfeld's technical experience is diverse and his representations involve a broad range of fields in the high technology industry, including semiconductors, electronics, digital cameras, LCDs, FOTA (firmware-over-the-air), telecommunications, payment cards and systems, including smart and RF cards, electronic commerce, software, and storage systems including flash memory.

Since 1995, Mr. Scheinfeld has been the bimonthly patent and trademark columnist for the New York Law Journal, and has published over 100 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. Chambers and Partners quote a client as saying, "He is great on his feet: he talks to the judge and jury in a comprehensible way."

Representative Engagements

• MasterCard International Incorporated – complete range of patent representation, including patent litigations as lead trial counsel in district courts across the country; successful representations involving payment processing systems, electronic commerce, security encryption techniques, and RFID, among many other innovations (see, for instance, 563 F.3d 1378 (Fed. Cir. 2009)); representation as amicus curiae in the landmark State Street Bank business methods patent case (47USPQ2d 1596)
• 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
• 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
• Renesas Technology Corp – representation as lead trial counsel and licensing counsel in litigation related to LCDs and LCD display driver technology
• Kara Technology Inc. – lead trial counsel against Stamps.com, resulting in successful appeal published at 582 F.3d 1341 (2009), culminating in a $5.5 million settlement for Kara Technology, stemming from patent infringement and misappropriation related to systems and methods for verifying the authenticity of stamps using unique encryption techniques
• 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.; other 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.

• "Building Judicial Capital in Patent Adjudication," New York Law Journal, January 2012
• "Expanding Domains: A Primer on the New gTLDs," New York Law Journal, November 2011
• "Finally - A Revitalized Patent Act," New York Law Journal, September 2011
• "Inequitable Conductors: All Aboard the 'Therasense' Train," New York Law Journal, July 2011
• "Federal Circuit Clarifies Law on Contempt and Reissue," New York Law Journal, May 2011
• "Venue Mandamus In the Federal Circuit," New York Law Journal, March 2011
• "Supreme Court Takes Notice Of Patent Cases," New York Law Journal, January 2011
• "The Evolving Law of Reasonable Royalty Patent Infringement Damages," New York Law Journal, November 2010
• "Current State of False Marking: Who Can Sue and How to Defend," New York Law Journal, September 2010
• "'Bilski v. Kappos': Evolving Standards For Patent-Eligible Subject Matter," New York Law Journal, July 2010
• "Inequitable Conduct: Getting the Attention It Deserves," New York Law Journal, May 2010
• "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
• "Standards Involvement Does Not Avert Patent Execution," New York Law Journal, May 2008
• "Standards Involvement Trumps Patent Enforcement," New York Law Journal, March 2008
• "Design Patents: Will 'Point-of-Novelty Test Survive?" New York Law Journal, January 2008
• "Willful Infringement: The Federal Circuit Overrules Itself," New York Law Journal, September 2007
• "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

• Speaker, "Non-Disclosure Agreements in Patent Litigation," 2011 Intellectual Property Law Spring Seminar, Michigan State Bar, Lansing, Michigan, March 2011
• "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