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.


News from the Center


NYS STLC Wraps Up Research Reports for Crystal Creek, EndoGlow and Empire Medicinals

Every semester at the Syracuse University College of Law, a combination of retired engineers, faculty, and law students work together in teams to identify potential barriers to commercializing a new technology. They do this as part of a course taught by Jack Rudnick for early stage technologies from around NYS. They search patent literature, publications, and existing products to identify prior art that may be a factor in being able to use and protect the inventions. The teams provide an overview of regulations that the technology must comply with. Through a partnership with the Entrepreneurship and Emerging Enterprises at the Whitman School, business students contribute to the completion of market evaluations. This semester’s projects included: Crystal Creek, offering a farm digester system that allows the farmer to remove enough phosphorous from farm generated waste to recycle a greater amount of fertilizer as well as increase energy production. EndoGlow, commercializing a fluorescent medical device that increases vision for robotic surgical systems and Empire Medicinals bringing discoveries about mushroom characteristics useful for health care to market. Venture Creations in Rochester, an RIT business accelerator offering support to early stage companies was a referral source.

NYS STLC Helps Write ModoScript’s Next Chapter

In July 2017, David Zuleta, a neuroscience and biotechnology undergraduate student at Syracuse University, was the only student startup winner of the Medical Device Innovation Challenge sponsored by the CNY Biotech Accelerator. Afterwards, his invention ModoScript, a digital prescription dosing system, was researched by law student consultants at the NYS STLC. The students provided intellectual property (IP), and market landscaping, which Zuleta says will help him develop marketing and investment pitches and—for the patent application process—prove novelty. Zuleta says that he hopes his invention will combat prescription drug abuse, boost patient compliance, cut medical costs, and disrupt the medical device industry. For more on ModoScript’s story, click here.


With NYSSTLC’s Help, Heatsleeve Is Heating Up the Prosthetic Devices Market

Bryan Costello and his company Costello Prosthetic Warmers LLC are winning start-up competitions and creating buzz for his sleeve invention, called Heatsleeve, which delivers warmth to prosthetics for amputees. Costello, who lost part of his right leg in 2011 in a motorcycle accident, came up with the solution when he noticed he was not getting enough warmth from his prosthetic, which was sucking up the cold Upstate New York winter air. After constructing a prototype to help with warmth, Costello knew he would need help taking his idea from the workbench into the marketplace. With the help of the NYS STLC, Costello has accessed market, regulatory, and intellectual property (IP) landscapes. Costello has crafted advanced prototypes to work with organizations such as military veterans-oriented The Heroes Project. For more on Heatsleeve, click here.


IP/Regulatory Law Watch


Redesigning Damages for Design Patent Infringement

Last year, the Supreme Court issued its opinion in Apple v. Samsung and ruled that damages for design patent infringement entails first identifying the article of manufacture the design patent covers and second determining the total profits from sales of that article. This fall, the Northern District of California offered guidance on how to determine the article of manufacture in the remand to the Apple v. Samsung litigation. Apple had argued that the entire phone was the relevant article of manufacture while Samsung argued that the article of manufacture was a smaller component of the phone with the design features. Now, in the most recent decision in the Apple v. Samsung dispute over damages, Judge Lucy Koh has adopted a four-part test offered by the United States government. Under this, the patent owner has the burden of persuasion to identify the article of manufacture based on (1) the design claimed in the patent; (2) the prominence of design in the product; (3) how the design is conceptually different from the product; (4) the relationship between the design and the product, including separability.


Around New York State


NEXT 2017

On November 17, the New York State Science and Technology Law Center co-hosted the NEXT Conference, focusing on new trends in technology, manufacturing and biotech.  Keynotes were delivered by Dave Warner, a medical neuroscientist and director of medical intelligence at MindTel, whose talk focused on the Internet of things, quantum computing, perceptual modulation, and experimental interactive systems. Hod Lipson, author, entrepreneur, and professor of engineering and data science at Columbia University, presented  on advancements in artificial learning and intelligence including robots and driverless cars. The event included eight workshops, including three NYS STLC tracks on Protecting IP, Papering Up and Finding the Funds. Speaker bios are on the NEXT site. Other NEXT hosts were the Central New York Biotech AcceleratorCASE, and TDO. For a video recap on NEXT 2017, click here.


Building a BAIL Team

On November 10, the Blackstone LaunchPad, a national organization present at many universities presented a BAIL Workshop at Syracuse University. At the workshop, Blackstone recommended that every new business or startup be familiar with a person in every part of BAIL, which stands for Banker, Accountant, Insurance, and Lawyer. Ben Alexander, Commercial Loan Officer at New York Business Development Corporation who represented the Banker category, suggests that any new company should come prepared when applying for a loan, including personal funds invested into the project, as well as a business plan, financial projections, sources and proposed uses of funds, and more. For more on constructing a BAIL team, including advice from each category, click here.


St. Regis Mohawk Reservation Patent Partnership Highlights Oddity in AIA

A recent partnership between the St. Regis Mohawk Reservation in Upstate New York with pharmaceutical company Allergan is highlighting a recent trend in patent ownership since congress passed the America Invents Act in 2012. Although no tribe members were involved in designing Allergan products, the company’s patents have become a big source of revenue for the tribe. Michael Shore, an IP lawyer in Texas, noticed when the AIA was passed  it didn’t apply to sovereign entities including Native American nations. By transferring a patent from a non-sovereign entity to a sovereign one, a patent would could more than quadruple in value by avoiding the increase in patent challenges brought on by the inter partes review. Through this, Shore recognized he could make patent owners, sovereign entities, and himself millions. For more on the story, click here.




2017 Innovation Celebration

The 2017 Innovation Celebration will take place on December 12, 2PM-8PM, at the CNY Biotech Accelerator in Syracuse. The event will provide  the opportunity to network with investors, entrepreneurs, and business leaders. The 2017 Innovation Celebration will also include pitches from GENIUS NY’s top finalists and  a keynote from corporate governance national expert, Ana Dutra on building an effective Board of Directors for startup and established companies. To learn more about the event and to register, click here.


The New England Venture Summit

The 12th annual New England Venture Summit, sponsored by Syracuse University’s Blackstone LaunchPad, will take place on December 6 at the Lombardo’s Conference Center in Boston Randolph, MA. The event will feature over 500 VCs, Corporate VCs, angel investors, investment bankers and CEOs committed to funding early stage and emerging companies. Attendees can participate in interactive panels, presentations, and high-level networking opportunities. To learn more about The New England Venture Summit and to register, click here.

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