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Founded in 1990 by the late Professor Ted Hagelin, the Technology Commercialization Law Program (TCLP) was the first in the nation to combine scholarly legal analysis and a guided, hands-on law curriculum with the active development of new technologies, intellectual property (IP), and start-up companies. Under the subsequent leadership of Syracuse University College of Law professors Jack Rudnick and Shubha Ghosh, the program has continued to pioneer the teaching and practice of innovation and the law, boasting hundreds of successful alumni, dozens of early stage companies assisted, a widening network of partners and collaborators, and a growing body of salient scholarship.

The program is a significant differentiator for the College, a focal point of its academic strategic plan, and one of the pillars upon which its scholarly and pedagogical reputation is built. Recognizing this strength, earlier this year, New York State’s economic development agency—NYSTAR—once again designated TCLP the New York State Science and Technology Law Center (NYSSTLC), this time extending the designation period from three to five years.

To ensure the program’s continued growth and success, College of Law and TCLP leadership—with critical input from the College’s IP faculty—have worked during the past year to reshape and divide the work of professors Rudnick and Ghosh between two new entities, beginning in Fall 2018.

First, the experiential work of Professor Rudnick and his staff and students will form the core of what will now be known as the Innovation Law Center. This new title better captures the essence of what the Center does—nurturing innovation through legal assistance—and it also represents the spectrum of sub-disciplines and services that Rudnick’s team addresses.

The Innovation Law Center will continue to oversee NYSSTLC (the NYSTAR center) and offer students the opportunity to assist with emerging technologies via a course called the Innovation Law Practicum. The Center also will explore new opportunities, such as additional applied learning law courses, executive education mini-courses, and an innovation law practice incubator.

Second, Professor Ghosh will lead a new institute for the College: the Syracuse Intellectual Property Law Institute (SIPLI). Founded on Ghosh’s pre-eminent scholarship in the field, SIPLI will pursue interdisciplinary research in the areas of IP, technology transfer, licensing, patents and trademarks, business regulation, and antitrust law, and it will publish and present in leading academic and practitioner forums. Most importantly, SIPLI will apply this scholarship to new academic opportunities for College of Law students.

Ghosh will remain the faculty lead for the College’s Curricular Program in IP and Technology Commercialization, and students will continue to hone their skills in the Intellectual Property Law Association and the Syracuse Journal of Science and Technology Law. Reflecting their shared interests and approaches, the Innovation Law Center and SIPLI will work closely together, coordinating the College’s directed technology law curriculum and sharing resources and deliverables.

“This new structure will positively impact the College’s ability to recruit students; enable us to cover more ground in a growing field; help us to integrate more thoroughly into the University’s innovation ecosystem; and further cement our reputation as a leader in law and technology programming,” says Dean Craig M. Boise. “With clear identities and new missions in place, I’m confident that the Innovation Law Center and SIPLI will reach new heights, collaborating within the College, across Syracuse University, and around the country.”

ABOUT THE COLLEGE OF LAW

Founded in 1895, the Syracuse University College of Law offers students a forward-leaning legal education designed to ensure that graduates have the knowledge, discipline, and analytical skills to succeed in the 21st-century legal profession and related fields. The College believes an outstanding legal education is as dynamic as the law itself, and Syracuse puts students at the center of an intellectual, professional, personal, and cultural experience that makes them better lawyers and better leaders throughout their lifetimes. law.syr.edu

On March 27, the United States Court of Appeals for the Federal Circuit overruled a jury verdict that Google’s use of Oracle’s JAVA Application Programming Interface (API) was fair use under copyright law. While the jury had determined that Google’s copying of the code was protected from copyright infringement, the Federal Circuit found that Google’s copying of the API’s in its Android phone was a commercial use of copyrighted software that involved no creativity on Google’s part and interfered with Oracle’s market for licensing. The case will go back for determination of damages Google would owe Oracle unless Google appeals to the Supreme Court. During an earlier phase of the litigation, Google’s petition to the Supreme Court was denied.

This decision is an important one for the software and smart phone industries. Copyright is an unusual area for the Federal Circuit, which was created in 1982 to handle appeals of patent litigation.  However, under federal jurisdiction law, the Federal Circuit can review issues raised in conjunction with patent claims. Here, Oracle had sued Google for patent and copyright infringement, but the patent claims settled leaving only the copyright issues. The Federal Circuit has handled only a handful of copyright cases and only three fair use cases. This lack of experience with copyright may move the Supreme Court to review  the Google decision. But while the Federal Circuit opinion has problems, these may not be enough to create a conflict among the lower courts, an important basis for Supreme Court review. Smartphone users and manufacturers as well as coders wait along with Oracle and Google to see where this case goes next.

Shubha Ghosh, who authored this note, wrote portions of a brief in support of Google.

When I recently got the chance to attend the Association of University Technology Managers (AUTM) 2018 Annual Meeting in Phoenix, Arizona, as a representative for NYSSTLC, I did not know what to expect. Well, what I got was a great opportunity to meet and talk with many experts in intellectual property and tech transfer. Starting off strong, the first evening featured a Fireside Chat with Joseph Allen, a staff member to former Senator Birch Bayh, who spoke of the early days of tech transfer and the interesting history of the Bayh-Dole Act. The Fireside Chat also featured Dr. Walter Copan, Under Secretary of Commerce for Standards and Technology and NIST Director, who discussed the new efforts to better streamline the federal tech transfer process, though interestingly there was some trepidation from the crowd due to Dr. Copan’s focus on the tech transfer process meeting business goals and timelines. The morning of the first full day featured a Keynote Address by the AUTM President, Mary Albertson, who unveiled AUTM’s new logo, and an entrepreneur, Dean Kamen, who spoke of the future and the need to protect and support young innovators.

In addition to the speakers and addresses given, everyday featured a number of educational sessions throughout the day. While the sessions varied in topic from licensing practices and administrative operations to industry partnerships and startup funding, I kept mostly to the sessions based on IP trends and successful practices. The IP sessions were fascinating, not only because most of the attendees and speakers were lawyers (most of these sessions counted for CLE credit), but because, though slightly different in focus from practicing before the PTAB to cost options for patent enforcement, they all addressed the recent issue for universities of sovereign immunity. Sovereign immunity is based in the 11th Amendment to the Constitution and it allows public universities, as they are state entities, to avoid inter parte review (IPR) proceedings before PTAB as long as they do not waive sovereign immunity by filing or consenting to a lawsuit in federal court. Recently, the Universities of Florida and Maryland succeeded in dismissing IPRs based on sovereign immunity, but the issue is that these rulings are very recent and there are questions as to whether private companies can assign their patents to public universities in order to escape the threat of IPRs. However, the speakers at the session did stress that public universities must still be vigilant because traditional challenges to patents remain on the table.

While I attended many sessions and learned a lot, my other function was to represent NYSSTLC and get the word out about the center. The center had a booth in the exhibitor hall, where there was a variety of groups featuring various services from different IP search engines to paint landscape services. I got to speak to many people at the NYSSTLC booth, in between sessions, who were interested in what the center did. In addition to the people I met at the booth, there were many other great networking opportunities throughout the AUTM Meeting. All in all, I had a great time at the AUTM Meeting, I met many people and learned a great deal.

Targeted Networking Opportunity Leads to Valuable Resources for one Start-Up Company

Tim Monroe started SoraLinks only a year ago.  This young, Saratoga Springs, NY-based company is developing a high tech product aimed at the exploding drone industry and its consumers. “Networking is critical when you are starting up a company,” says Monroe, “but if you are not doing so in a targeted and directed way you can waste a lot of time.”

Prior to starting SoraLinks, Monroe was running Saratoga Aerial Media, a business he founded which provides aerial cinematography, photography and video services using drone devices. A Clarkson engineering graduate with over 20 years of senior engineering management experience and an extensive background in software, Monroe confesses that “there are some aspects of this new technology product that I am developing that are beyond my expertise. And I don’t know enough about manufacturing, which makes it difficult to figure out how to design for commercial production levels without help.”

New Connections Open Doors to Solving Product Development Needs

In July, Monroe attended a FuzeHub Solutions Forum held in Saratoga Springs, NY.  These events are hosted by FuzeHub around the State and bring together manufacturing, technology, product development and business support resources in a “one-stop shop” format that allows entrepreneurs to access an incredible collection of expertise for free.  “It was a very efficient and effective way for me to network with the right people,” according to Monroe.

At the Solutions Forum, Monroe met with Molly Zimmermann, Associate Director of the New York State Science and Technology Law Center (NYSSTLC) at the Syracuse University College of Law (SUCOL), and Glenn Saunders, Senior Engineer with the Center for Automation and Technology Systems (CATS) at Rensselaer Polytechnic Institute (RPI).  Both NYSSTLC and CATS (as well as FuzeHub) receive funding from Empire State Development’s (ESD) division of Science, Technology and Innovation (NYSTAR) to support NYS companies with business, technology and prototype development. ESD is New York State’s largest economic development organization. NYSTAR funds 70+ facilities and tools that enable growth.

As a result of the Solutions Forum, Saunders advised Monroe on some of his product design questions and introduced him to a fellow research scientist, Professor James Castracane, Head of the SUNY Polytechnic Institute’s Nanobioscience Constellation. Professor Castracane and the SUNY Polytechnic Institute are key resources now involved in helping Monroe further develop and test his product prototype and proof-of-concept.

Networking with the Right Resources Leads SoraLinks to $25k Grant Funding

Though his discussions with Zimmermann at the Solutions Forum, Monroe was also introduced to the services offered by NYSSTLC. NYSSTLC provides legal education, research, information and support services to NYS entrepreneurs and companies with new technologies.  Monroe worked with Sean Assad, a third year law student at SUCOL working with the NYSSTLC. Assad researched the intellectual property landscape and completed a market and regulatory analysis.  “My new product is a novel invention and I want to protect it,“  says Monroe, “NYSSTLC has access to incredible and extensive databases and can provide a great analysis of the status of existing, competitive IP for technologies like mine.  This is key for entrepreneurs like me who are going through the IP and patent process.” NYSSTLC utilized the experience and legal expertise of Dean Bell, an engineer with over forty years of experience in product development, and a faculty member at SUCOL. In addition, Kelsey Leeper, a student from the Syracuse University Whitman School of Management’s Entrepreneurship and Emerging Enterprises researched the market landscape.

Many inventors and entrepreneurs aren’t aware of the myriad legal and regulatory challenges their business or technology is facing. The research and analysis compiled by the NYSSTLC is provided as a proprietary Commercialization Report to clients like Monroe to help them identify potential challenges and effective strategies to bring their technologies to market. Companies are selected through an application process and receive the research reports and analysis for free.

SoraLinks’ connection to the NYSSTLC and Syracuse University also led to more opportunities and expanded business support.  After becoming a virtual incubator member of the Syracuse Technology Garden, SoraLinks won a $25,000 funding award through their “Grants for Growth” program.  This funding is currently enabling Monroe to finance the product development and testing support for SoraLinks with SUNY Polytechnic.  “It comes down to targeted networking with the right resources,” says Monroe, “and FuzeHub’s Solutions Forum was a great event for SoraLinks to get connected.”

Empire State Development’s Division of Science, Technology, and Innovation (NYSTAR) has re-designated Syracuse University College of Law’s Technology Commercialization Law Program (TCLP) as the New York State Science and Technology Law Center (NYSSTLC, or Law Center). Having served as the NYSTAR Law Center for four consecutive, three-year terms, TCLP’s faculty and students will continue to support the state’s economic development by helping entrepreneurs determine prospects for the success of new and emerging technology in the marketplace.

The re-designation the Law Center is a testament to the exceptional experience in technology commercialization strategy, intellectual property assessment, patent landscaping, technology licensing, R&D, technology transfer, and entrepreneurship education of the College of Law’s technology commercialization and intellectual property faculty, led by Law Center Director M. Jack Rudnick and Crandall Melvin Professor of Law Shubha Ghosh. Supplementing this expertise is TCLP’s cornerstone Technology Commercialization Research Center (LAW 815). Now in its 25th year, the Research Center allows students from the College and across campus to work with entrepreneurs, companies, universities and research centers throughout the state.

“I am extremely pleased that NYSTAR has granted the College of Law the coveted designation as the only New York State Science and Technology Commercialization Law Center (NYSSTLC),” says Craig M. Boise, Dean, Syracuse University College of Law. “NYSTAR’s action is an explicit recognition of our faculty’s strength in this area, as well as our students’ hard work and creativity. Coupled with the College of Law’s TCLP, NYSSTLC allows us to partner with industries across New York, to support economic development in the state, and to provide a law curriculum that is rich in hands-on, practical experience. Our innovative research and teaching in this area are-and will continue to be-attractive to prospective students interested in pursuing both traditional and non-traditional legal careers in the dynamic field of technology commercialization.”

“Our network of NYSTAR-supported centers is crucial to New York State’s innovation economy, providing assistance that helps companies transform concepts into realities,” says Empire State Development President, CEO, and Commissioner Howard Zemsky. “The Science and Technology Law Center continues to offer unparalleled research and legal solutions for a range of businesses and sectors, and I congratulate the College of Law’s faculty and students on their re-designation.”

“We are excited and pleased to have been re-designated as the NYSSTLC. I believe the re-designation recognizes the unique skills and growth of TCLP staff, students, and researchers who do the work,” says Rudnick. “Since 2004, we have earned an excellent reputation for helping startups, and I am not aware of any similar program or capability anywhere in New York State.”

Since its initial NYSSTLC designation in 2004, the Law Center has accumulated an extensive body of research, educational materials, consulting services, high-quality academic offerings, and information forums-including conferences, webcasts, newsletters, and guidebooks-that promote economic growth in the state by helping to transform research and technology into business.

Among services that the Law Center will continue to provide on behalf of NYSTAR, faculty and students will help to increase awareness and understanding of legal issues in commercialization, such as intellectual property protection; technology transfer; patents, copyrights, and trademarks; and licensing agreements. They also will advise state centers for advanced technology, centers of excellence, incubators, innovation hot spots, regional manufacturing extension partnership centers, and others on technology-related legal issues.

The SU Law Center has expanded its services over the last five years to keep pace with the growth of tech startups in the state. During the most recent designation, NYSSTLC completed approximately 150 research projects at an average rate of 50 projects a year. According to Rudnick, the Law Center takes in clients from all over New York State seeking the assistance of the Law Center, Syracuse University’s extended Innovation Ecosystem, and other organizations dedicated to tech startups.

“Whether tech startup assistance is provided in Syracuse or some other region of the state, NYSSTLC often is involved,” says Rudnick. “Our program also reaches out across the University’s Innovation Ecosystem to engage the campus’s tech startup community wherever possible. For instance, the Law Center has a long-standing relationship with Whitman’s Entrepreneurship and Emerging Enterprises program, and its students work as part of our teams. We have helped many entrepreneurs looking to develop their business and students looking to launch their careers, and we intend to continue.”

Rudnick says his plans for the future are optimistic and expansive. “We are developing a special curriculum for non-legal students, offering transition services for individuals who want to make the move themselves from the lab to the market,” he says. “Moreover, we plan to invigorate the network of tech commercialization clinics around the state, and we will expand our very popular guidebook series, adding more issues on topics relevant to innovation.”

It is evident when sitting in on a meeting of the College of Law’s Technology Commercialization Research Center (LAW 815) that there’s a reciprocal relationship between clients seeking help from student researchers in order to commercialize a new technology and students who are accumulating critical experience in intellectual property assessment, patent protection, market landscaping, and other commercialization matters.

Certainly, this was the case when the Research Center team met with entrepreneur Andrea Madho and software engineer Philip Manning G’98 in Dineen Hall on Jan. 16, 2018, to learn about a semester-long project the students will be conducting on behalf of Madho’s and Manning’s start-up fashion technology company, Lab141.

Now in its 25th year, the Research Center allows students from the College of Law and across campus to work on technology commercialization projects with entrepreneurs, companies, universities, and research centers from across New York State and to apply their classroom knowledge to real-world technology projects. This Research Center group is led by College of Law Adjunct Professor Dean Bell G’72, a former R&D engineer for 41 years at medical technology firm Welch Allyn who has been awarded nine US patents. Bell describes himself as the “coach” of the group of eight. His “quarterbacks” for the Lab141 project are Technology Commercialization Law Program (TCLP) senior research associates and 3Ls Annie Millar and Nick Jacobs, who is a joint J.D./M.B.A student.

Although Madho is a client rather than a teacher, her approach showed that she was eager to share her years of experience in business development, marketing, and strategic and financial consulting with the young researchers. As she told the students, “All my skills in public relations, technology, and raising money, I’m now using myself as an entrepreneur.”

The same is true for Madho’s skills in pitching an idea. At the core of this kick-off session was a deft, 10-slide “pitch deck” that she has been using to describe the idea behind Lab141 to stakeholders. Madho’s presentation begins with an honest description of her own travails finding clothes, especially designer and professional clothes, to fit her “short, plus-sized, high-waisted body type.”

As Madho explained, “Both men and women have problems finding clothes to fit. Even men have told me they are too short, too tall, too big, too lopsided, or their arms too long for off-the-rack clothes.” Because “regular” height, as far as women’s clothing is concerned, is 5 feet 5 inches to 5 feet 8 inches, most women are considered “specialty size,” with 67% of women deemed plus-sized and 56% either “tall” or “petite”. Today, the ubiquitous dress size code that goes from 0 to 14 is so arbitrary as to be meaningless, observed Madho. “We want to have no sizes ever!”

But whereas men at least can get suits and shirts made-to-measure at a traditional tailor, non-regular-sized women have few options when it comes to the designer and professional clothes market. Lab141’s solution is to offer advanced, technology-based manufacturing so that designers, retailers, and brands can offer ready-to-wear, made-to-measure garments direct to the consumer. As the company’s tag-line states, Lab141 offers consumers “luxury made-to-fit clothes in 48 hours.”

“Rather than create a brand for a certain body type,” explained Madho, “we chose to tackle made-to-measure clothes from a technological standpoint.” It’s then that Madho stands up, in order to show—rather than tell—the students what she means. She is wearing a wrap dress designed by their alpha customer that fits her perfectly. That’s because, she explained, it has been measured, mapped, and cut to her exact body measurements and fit preferences.

Her dress and a description of how it was fitted can been found on Lab141’s website. That site will be where consumers can purchase new designer clothes offered in a made-to-fit format. Madho says Lab141 plans to initially offer one designer piece per week. Because of the fast turnaround, a consumer sends in a slate of specific measurements first and then Lab141 uses those measurements to cut the dress to order, having already received patterns and fabric from the designer at the company’s Syracuse, NY, manufacturing location. After the order is fulfilled, the consumer can buy their purchase from the website.

To buy a bespoke item, Madho says the consumer can measure herself with a good old fashioned tape measure, or use an online measuring app, or purchase Lab141’s proprietary Fiteema system, a wearable measuring garment that Lab141 also will sell on its website. The brainchild of Manning, a former software engineer for Procter & Gamble, Fiteema uses embedded technology to measure many parts of the body useful for fitting clothes, such as neckline, waist position, slope of the shoulder, curve of the back, and so on. “Fitting and cutting clothes is all about Bezier curves and mapping the body,” Madho observed. “There’s a lot of math and science involved in ‘redimensioning’ clothes to fit a body exactly.”

Lab141’s technological approach to clothes manufacturing offers many advantages for designers who partner with Madho and Manning. They include access to a lucrative market of consumers of all body types, a more transparent supply chain, reduced inventory, and digital, analytical reports about fit and preference that can be shared with designers. All in all, explained Madho, Lab141 offers a better way for clothes designers to make money from an untapped market in an industry in which margins are small.

For their part, this cohort of LAW 815 students will perform several important business startup tasks for Lab141 as it continues to assess its chances of success in a competitive market. “We will offer a patent landscape, competitor analysis, market landscape, and trademark review,” explained Annie Millar. “The last one will be interesting because there’s been a number of design trademark issues in the clothing industry in the last year.”

“Working with clients such as Madho and Manning provides the TCLP students with a unique and exceptional experiential learning opportunity,” notes Bell. “This research experience and knowledge of entrepreneurship and tech commercialization often translates into successful careers. The clients benefit from unbiased, independent, thorough research and assessment of an emerging invention by very talented, multidiscipline students.”

Lab141 joins a long list of clients who have benefitted from the industriousness and skill of Research Center students in the last 25 years. That list includes projects on behalf of medical device, green building, and biotechnology companies and emerging technologies as varied as microelectromechanical systems, silicon membranes, smart windows, and the handling of metadata. In fact, TCLP—which in addition to the Research Center also directs the NYSTAR-designated New York State Science and Technology Law Center—has expanded its services over the last five years to keep pace with the growth of tech startups in the state.