MARCH 2017

Innovation Review

Monthly information on a variety of economic, business, and technology related legal news as well as highlights and profiles of resources and events across New York state.


IP/Regulatory Law Watch

Shubha Ghosh

Federal Protections for New Tech

How can established companies with market power acceptably respond to a new technology that challenges their market share? The relationship between a number of colliding technology development and transfer claims is the subject of an amicus brief asking the Supreme Court to decide a new medical device company’s grievance. The company, RTI, patented and attempted to market a new type of retractable syringe. RTI successfully argued that the dissemination of the device was weak because of product disparagement and antitrust activity by Becton, Dickinson and Company, an established device company with a large market presence in hospitals and clinics. On appeal, the Fifth Circuit reversed on grounds that antitrust claims were precluded by the disparagement claims.

Shubha Ghosh, the Crandall Melvin Professor of Law at the Technology Commercialization Law Program filed a pro bono amicus brief on behalf of inventor groups. He advocates in favor of protection for innovators against deceptive conduct that is also exclusionary, stating that to do otherwise is to prevent innovators from the antitrust protections of the Sherman Act. The brief reviews product disparagement claims, antitrust claims, and First Amendment speech issues relevant to the legal protection from conduct that is harmful to business development.

Supreme Court Building

Understanding Alice

Courts continue to scope out the limits of business method patents after the 2014 Supreme Court Alice decision. The Federal Circuit Court recently granted summary judgement to Clarilogic, Inc., which sought a declaratory judgement that it was not infringing a Formfree patent and that the patent was invalid. The Formfree patent claimed a method for collection, analysis, and generation of information reports for providing credit reports utilizing an algorithm. The Court agreed the patent was invalid because it only claimed abstract ideas. In another case, a patent for the provision of feedback from physical characteristics such as heart rate was found invalid under the Alice ruling, also for claiming only abstract ideas. The Court noted that “controlling precedent establishes that the idea of collecting and analyzing information or data, even when particularly limited, is an abstract idea.”
For a graphic rendition of the Alice decision, see Alice in Patentland brought to our attention by Senior Research Associate, Audrey Ogurchak.

US Patent and Trademark Office logo

PTAB Powers

Are patents private property rights that should not be revoked by an executive body like the Patent Trial and Appeal Board? This question was brought to the full Federal Circuit court by the owner of an LCD technology patent invalidated by the PTAB last month. Cascades Projection LLC, the owner of the patent, argued that patents are private rights that can only be invalidated by a court, not by the PTAB. This is not the only case that raises these questions; patent commentators have argued, “America Invents Act reviews are unconstitutional because they deprive patentees of the right to a jury trial on the validity of their patent.” Previously, the issue of the constitutionality of the America Invents Act went to the Federal Circuit, which dismissed the suit because the inventor-plaintiff and his company did not have standing to sue. See Madstad Engineering, Inc. v. USPTO, 756 F.3d 1366 (Fed. Cir. 2014).

Kauffman Foundation logo

Kauffman Foundation: Annual State of Entrepreneurship

The Kauffman Foundation held its annual State of Entrepreneurship conference in Washington D.C. in February. The event, whose focus is entrepreneurship and new businesses formation, announced the issue of a report on the demographic, geographic, and scaling trends reshaping entrepreneurship in the United States. In addition, Victor Hwang, the newly appointed VP for Entrepreneurship at the Kauffman Foundation announced the launch of a Zero Barriers to Startup initiative to identify common barriers in entrepreneurship and develop solutions to recurring problems.


Client Spotlight

Euphony logo


Euphony, a Syracuse-based startup company, recently won the $100,000 top prize in the Germinator business competition program sponsored by CenterState CEO. Euphony is developing text-to-speech solutions to allow people with speech communication disorders to express thoughts and emotions. Before winning the grand prize at the Germinator, Euphony landed third place at Hack UpState VIII. Learn more about the importance of alternative communication devices (AAC) here.

Molecular Glasses logo

Molecular Glasses

Mike Molaire, CEO of Molecular Glasses, will present on “Universal Benchmarking Protocol for OLED Materials” at the LOPEC 2017 Conference in Munich, Germany. Companies and Universities from around the world will convene to exchange research and development progress in printed electronics. The utilization of OLED technology in commercial applications including cell phones, tablets, computers, televisions, and lighting is accelerating with full-scale adoption that is highly dependent on cost reduction and lifetime improvements. Molecular Glasses, Inc. is focused on the development of robust and efficient manufacturing processes and high quality, low cost OLED material.



Lab to Market logo

How Entrepreneurial Law and IP Clinics Can Assist in the Commercialization of University Intellectual Property

On March 29, Brian Krumm, Professor of Law at University of Tennessee College of Law, presented on How Entrepreneurial Law and IP Clinics Can Assist in the Commercialization of University Intellectual Property. Professor Krumm is the leader of University of Tennessee College of Law’s Business Law Clinic, which provides legal services to local businesses and entrepreneurs while allowing students to learn the ins and outs of transactional law. In his webcast, he discussed a collaboration between a faculty inventor and the clinic. The clinic was able to form the LLC and drafted beta testing, employment, consulting, and end-user agreements. Professor Krumm recently completed a book, A Transactional Matter, outlining the transactional legal work necessary for business formation, operation, and the commercialization of technology.

NYS STLC webcasts are posted in the resources section of the website.

World Intellectual Property Day

Since 2000, April 26 has been designated as World Intellectual Property Day, an annual celebration of intellectual property rights that protect innovation and creativity. The World Intellectual Property organization suggests activities for organizations to promote IP. In New York State, the NYIPLA is hosting activities this year. The day is centered around innovation that improves lives, such as medicine and agriculture technology. Join the conversation with the hashtag #WorldIPDay.

NYS Dept of Environmental Conservation logo

Earth Day 2017

April 22 is Earth Day. This year, a March For Science and teach-in on the National Mall in Washington is being organized by over eighty partners including the NYS Department of Environmental Conservation. The teach-in will be centered around environmental climate literacy, and green technology. Content will focus on green tech innovation and dispelling misconceptions about green technology.

RIT logo

RIT Technology Conference

The fourth annual Effective Access Technology Conference will be held on Friday, April 21, 2017 at the Gene Polisseni Center on the Rochester Institute of Technology campus. The goal of the conference is to bring together innovators, researchers, service and health care providers, technology developers, and end users to share their innovative ideas, products, and needs.

2017 Biotech Symposium logo

Biotechnology Symposium 2017

The Gateway Center at SUNY ESF in Syracuse will host the 9th Annual NYS Biotechnology Symposium on May 18 & 19. The agenda for the symposium includes plenary presentations and concurrent sessions focused on exploring biodiversity with molecular tools, nanobiotechnology & human health, nutrition & metabolic disorders, public health, enviornmental pollution, energy, chromatography and environmental biotechnology.

A pre-symposium workshop on Wednesday, May 17 focused on biopharmaceutical analysis of drug substances and drug products (small molecule drugs and recombinant biologics) will be presented by Dr. Michael W. Dong. Click here to register for the workshop.

U of R Center for Emerging & Innovative Sciences logo

CEIS University Technology Showcase

On April 13, the 2017 CEIS University Technology Showcase in Rochester will provide University researchers an opportunity to present their work to industry and other researchers and organizations that promote economic development. To register for the showcase, click here. Registration closes April 6th.

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