Charles R. Macedo, a physicist by training,
litigates in all areas of intellectual property
law, including patent, trademark and
copyright law, with a special emphasis in
complex litigation and appellate work.
Companies and individuals from a wide
range of industries turn to him to develop
offensive and defensive strategies for the
development and enforcement of their patent
and trademark portfolios.
Fluent in technical jargon spoken by
inventors and clients, patentese spoken at
the PTO, legalese spoken by courts and
attorneys, business jargon spoken by
management, and plain English, he seeks to
translate complex subject matter into terms
all can understand.
The author of The Corporate Insider's Guide
to U.S. Patent Practice, Mr. Macedo has
been cited as an authority on intellectual
property issues by the Wall Street Journal,
Dow Jones, BNA, Bloomberg, Inside
Counsel, Managing Intellectual Property,
Technology Transfer Tactics, IP Law 360,
and other media.
His patent experience encompasses a broad
range of industries and products including
Internet, e-commerce and computer-enabled
inventions; financial services and transaction
processing; Software-As-A-Service; life
sciences; social media; green energy and
power; apparel and life sciences, to name a
few. Mr. Macedo also has enforced and
defended against trademark assertions for
financial service providers, non-profit
organizations, cosmetic companies, luxury
retailers of designer handbags and retail
chains. He also advises clients on IP
contracts, licensing and confidentiality
agreements.
By identifying vulnerabilities and
considering variations on design concepts,
Mr. Macedo helps clients develop strategies
to maximize protection and prevent
infringement challenges. He frequently
serves as special counsel to companies
seeking an IP strategy, not just a patent; to
IP holders in anticipation of litigation and as
coordinating counsel for multiple law firms.
Even before the State Street case was
decided, he successfully defended the
Discover Card division of Morgan Stanley
from charges of patent infringement, and
obtained a summary judgment of noninfringement.
He recently led the ARE
litigation team representing a financial
institution asserting a portfolio of financial
service-related patents against competitors.
Mr. Macedo writes prolifically and lectures
regularly as he tracks and analyzes in real
time the most important developments
affecting IP strategy and litigation. As Co-
Chair of the Amicus Committee of the New
York Intellectual Property Law Association,
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Mr. Macedo has been principal counsel or
additional counsel on amicus briefs in some
of the leading patent cases of recent years,
including Mayo v. Prometheus (at the
Supreme Court), Association of Moleular
Pathology v. Myriad Genetics Inc. (at the
Supreme Court and the Federal Circuit),
CLS Bank Int’t v. Alice (at the Federal
Circuit en banc). His appellate experience
also includes petitions for mandamus, for
rehearing before the U.S. Court of Appeals
for the Second Circuit and for certiorari to
the U.S. Supreme Court on behalf of various
clients.
He holds bachelors and masters degrees in
physics from The Catholic University of
America and a law degree from Columbia
Law School, all with honors. He was the
sole law clerk to Hon. Daniel M. Friedman
of the U.S. Court of Appeals for the Federal
Circuit, 1989–1990. The recipient of the
prestigious AIPLA Robert C. Watson
Award, Mr. Macedo is included in
SuperLawyers and Million Dollar Verdict.
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