Amster Rothstein and Ebenstein, LLP - Intellectual Property Law

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, JILPA 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; and apparel, 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 non-infringement. 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, 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 Molecular 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, IP Stars and Million Dollar Verdict.


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Certification/Specialties
  • Registered to practice before the U.S. Patent and Trademark Office
Bar Admissions
  • New York, 1990
  • U.S. Court of Appeals Federal Circuit, 1990
  • District of Columbia, 1991
  • U.S. District Court Southern District of New York, 1991
  • U.S. District Court Eastern District of New York, 1992
  • U.S. District Court Western District of New York, 1998
  • U.S. District Court Eastern District of Michigan, 2001
  • U.S. Supreme Court, 2008
  • U.S. District Court Eastern District of Wisconsin, 2011
Education
  • Columbia Law School, New York, New York, 1989. J.D.
    Honors: Harlan Fiske Stone Scholar, Columbia Business Law Review, Managing Editor, 1988 - 1989.
  • The Catholic University of America, Washington, D.C., 1986, B.S./M.S. Physics.
    Honors: Summa Cum Laude, Phi Beta Kappa, Phi Eta Sigma.
Professional Associations & Memberships
  • American Intellectual Property Law Association, Member
  • American Intellectual Property Law Association Quarterly Journal Editorial Board, Member
  • American Bar Association, Member, Intellectual Property Law Section
  • Federal Circuit Bar Association, Member
  • Financial Service Industry Intellectual Property Association, Member
  • New York State Bar Association, Member, Intellectual Property Law Section
  • New York Intellectual Property Law Association, Member
  • The Association of the Bar of the City of New York, Member
Professional Experience
  • Friedman, Wang & Bleiberg, P.C., Associate, 1991-1996
  • Cravath, Swaine & Moore, Associate, 1990-1991
  • Hon. Daniel M. Friedman, U.S. Court of Appeals for the Federal Circuit, Law Clerk, 1989-1990
Awards & Honors
  • New York, 2012 Intellectual Property Super Lawyer, 2012
  • New York — Metro, 2011 Intellectual Property Super Lawyer, 2011
  • Robert Watson Award (AIPLA), 1990
  • Recipient, Clyde Cowan Award (Physics), 1986
 

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