If you are having trouble viewing this email, view online

The Innovation Review is the New York State Science & Technology Law Center's monthly newsletter, bringing information on a variety of economic, business, and technology related legal news as well as highlighting and profiling resources and events across the state.

IP/Regulatory Law Watch

Update on Supreme Court Cases Involving Willful Infringement

When can a patent owner obtain enhanced damages in a successful suit for patent infringement? What is the relationship between the standard for awarding enhanced damages and awarding attorney’s fees in patent cases? These and other questions were debated before the Supreme Court on February 23, 2016, in a pair of consolidated cases, Halo Electronics v. Pulse Electronics and Stryker Corp. v. Zimmer. The final decision, to be announced in the next few months, will affect patent practice as well as the pace of technology development and litigation. Read more.

President Obama's Budget Calls for Increase in USPTO Funding

President Barack Obama’s proposed 2017 budget allocates $3.32 billion in funding next year to the U.S. Patent and Trademark Office, a slight increase of $49 million, or 1.5 percent, from the current fiscal year. The president said the increase in budget will help the USPTO promote its “aggressive patent pendency reduction agenda to reduce overall pendency and backlog.” It will also allow the office to continue to enhance patent quality," to improve information technology services and post-grant processes and to promote intellectual property protections worldwide. Additional highlights of the President’s budget are available in the U.S. Department of Commerce’s Fact Sheet.

Licensee Beware: Decision Highlights Potential Pitfalls for IP Licensees

The Sixth Circuit's recent decision in Cyber Solutions International v. Pro Marketing Sales underscores the importance of licensees being fully aware of the risks included in licensing agreements. In this case, Priva, a company focused on cybersecurity technology, granted a lien on all company assets - including intellectual property - to obtain a secured loan from a lender, Pro Marketing. Priva subsequently entered into a license agreement with Cyber Solutions, granting them an exclusive license to current company technology and certain rights to future technology in exchange for up-front payments.

Priva was able to develop a second-generation technology based on the financing from Cyber Solutions, but was unable to become financially viable and decided to cease operations. It voluntarily ceded its assets to the initial lender, Pro Marketing, per the secured lending agreement and notified Cyber Solutions that it was terminating the license agreement. Cyber Solutions filed suit and the federal district court sided with Pro Marketing and the Circuit Court affirmed. Simply advancing funds to produce second generation technology did not give Cyber Solutions superior rights to the technology without any additional agreements or documentation to that effect. During the ruling, the court noted that the licensee “cannot escape the consequences of its decision to enter the License Agreement simply because it is now unhappy with the outcome.” Read more about the case here.

Around New York State

New Southern Tier Clean Energy Competition Accepting Applications

The NYSERDA-sponsored 76West Clean Energy Competition was launched in January of this year to grow entrepreneurs in the Southern Tier Area and attract resources to build clean energy businesses and jobs. The competition offers $10 million in prize money over its four, one-year competition cycles. Judges will award $2.5 million in prize money each year and participants will receive business training and mentoring at each phase of the competition. Applications are due by March 15, 2016. Additional NYSERDA programs and services can be found on their website.

Several Universities in New York State Classified As Top Tier Research Universities

The 2015 Carnegie Classification of Institutions of Higher Education was released on February 1, 2016. The Carnegie Commission on Higher Education developed the classification system of colleges and universities in 1970 to support its program of research and policy analysis. Doctoral universities are ranked based on an examination of recent data that helps Carnegie analysts gauge research activity as compared with other doctoral institutions. Criteria for research activity includes such factors as research and development expenditures, research staff and number of doctoral conferrals. Syracuse University moved from an “R2” designation, denoting a “higher research activity,” to an R1 designation, which is the top research class a university can be awarded. Syracuse is one of nine New York State universities to be included in this prestigious class. The others are: Columbia, Cornell, CUNY Graduate School and University Center, New York University, SUNY Stony Brook, SUNY Albany, SUNY Buffalo, and University of Rochester. To learn more about the designations, visit the Carnegie Classification website.

Educational Opportunities

Lab-to-Market Spring Webcasts on Upcoming Supreme Court IP Cases

The NYS Science & Technology Law Center is pleased to announce that Professor Shubha Ghosh, the new Crandall Melvin Professor of Law at Syracuse University College of Law and director of Technology Commercialization Law Program, will be presenting a series of webcasts regarding upcoming Supreme Court cases. The cases include: the combined Halo Electronics Inc. v. Pulse Electronics, Inc. and Stryker Corporation v. Zimmer Inc.; Cuozzo Speed Technologies, LLC v. Lee; and Kirtsaeng v. Wiley & Sons. Each webcast will last for approximately an hour and 15 minutes and provide time for questions. There is no fee but registration is required. To learn more about the cases to be presented, and watch other webcasts presented by the NYS STLC, please visit our website.

Pre-Seed Workshops Scheduled in Long Island, Binghamton, Ithaca, and Buffalo

Pre-Seed Workshops are scheduled for Long Island, Binghamton, and Ithaca in March and Buffalo in May. The Pre-Seed Workshops consist of two full days of workshop sessions that are designed to quickly assess new technologies, identify market opportunities, and develop a commercialization strategy. Participants include researchers, inventors, or entrepreneurs with an idea they would like to form a business around, and volunteers from the community with experience in law, business management, product development, and other technology commercialization areas. Teams form around each “Idea Champion” as they work through the Pre-Seed Workshop material to solidify a business idea and evaluate its potential. Over 100 new companies have participated in the workshops around the state and have secured over $50 million in the past five years. To learn more, visit the Pre-Seed Workshop website.