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JACOB R. OSBORN

ASSOCIATE

  • J.D., 2009
    American University Washington College of Law
    (cum laude)
  • M.S., 2009
    Electrical and Computer Engineering
    The Johns Hopkins University
  • B.S., 2006
    Computer Science
    Xavier University
  • B.S., 2006
    Mathematics
    Xavier University

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Jacob Osborn is an associate in the firm’s Litigation Department and a member of its Patent Litigation Practice. He joined Goodwin Procter in 2008. Since 2008, Mr. Osborn has provided patent litigation support in computer and electrical technologies, with particular emphasis on computer hardware, software, encryption techniques and business methods. Mr. Osborn has also provided patent prosecution support at all stages of prosecution, including appeals to the Patent Trial and Appeal Board, and reexamination procedures. Additionally, Mr. Osborn is a member of the firm’s National Security & Foreign Trade Practice and regularly advises clients regarding regulatory compliance with the Export Administration Regulations (EAR) and the Committee on Foreign Investment and the United States (CFIUS), particularly with respect to electronics, telecommunications, software, and encryption items.

WORK FOR CLIENTS

In the area of patent and other intellectual property litigation, Mr. Osborn has represented clients in a wide range of disputes in jurisdictions throughout the country involving many different technologies. Mr. Osborn's litigation experience includes patent, copyright, trademark and trade secret disputes. Mr. Osborn has also represented clients with respect to other software-related claims involving the Computer Fraud and Abuse Act and the Electronic Communications Privacy Act.

The technologies at issue in intellectual property litigation matters handled by Mr. Osborn include signal processing of digital television transmissions, MPEG processing, DVR, VOD, IPPV, and conditional access technologies; mobile software applications; workflow management software; GPS mapping technologies; encryption and decryption technologies; child support payment systems; streaming media systems; font software technologies; Flash-based video game technologies; and lockbox processing systems.

Mr. Osborn’s representative cases include:

  • In Re: Maxim Integrated Products, Inc., MDL No. 2354 (W.D. Pa.)
  • Encyclopaedia Britannica v. Dickstein Shapiro (D.D.C.)
  • B&B Hardware, Inc. v. Hargis Industries, Inc. (U.S. Supreme Court Appeal No. 13-352)
  • James M. Linick v. United States (Fed. Cir.)
  • Bell Helicopter Textron Inc. v. Eurocopter (D.D.C.)
  • Augme Technologies, Inc. v. Pandora Media, Inc. (N.D. Cal.)
  • Monotype Imaging Inc. v. Deluxe Corporation (D. Mass.)
  • Burns v. AOL, Inc. et al. (D. Mass.)
  • Kixeye, Inc. v. Russ (N.D. Cal.)
  • PMC, LLC v. Motorola, Inc. et al. (E.D. Tex.)
  • Augme Technologies, Inc. v. Tacoda, Inc. (S.D.N.Y.)
  • JPMorgan Chase & Co. et al. v. ACS et al. (D. Del.)

Finally, in his capacity with the National Security & Foreign Trade Regulation Practice, Mr. Osborn has also advised a number of clients regarding regulatory compliance. This experience includes advice based on the Exon-Florio provisions administered by CFIUS, including recent CFIUS filings for clients, as well as work for dozens of clients regarding compliance with the EAR.

PROFESSIONAL ACTIVITIES

Mr. Osborn is a member of the American Intellectual Property Law Association.  He was selected to attend a U.S. delegation of politicians and businessmen for a 12-day tour of Russia, funded by the Russian government, to meet with various Russian officials and advise on IP compliance in light of Russia’s accession to the World Trade Organization.

MEDIA

Mr. Osborn is the author of various publications regarding intellectual property, such as "A View of the Hierarchy of Patent Rights, TRIPS, and the Canadian Patent Act," Akron Intellectual Property Journal, Volume 4, Number 2, 20100, 261, and "What is the Bilski invention?" Managing Intellectual Property Newsletter (June 11, 2010; coauthor with Stephen T. Schreiner).

PROFESSIONAL EXPERIENCE

Prior to joining Goodwin Procter, Mr. Osborn was a technical specialist at Oblon, Spivak, McClelland, Maier & Neustadt, PC, where he focused on electrical technologies and prosecuted patents at all stages of prosecution. His areas of specialty included hashing techniques, block ciphers, stream ciphers, public key encryption and database designs.

Before practicing patent law, Mr. Osborn was a software engineer for iMake Software and Services, a video-on-demand company located in Bethesda, Maryland. While at iMake, he consulted video-on-demand content distributors regarding software and industry best practices, produced technical documents including software requirements and developed software code for video-on-demand applications. Mr. Osborn has software development experience in many different programming languages including Java, C, C++, Python, Javascript, HTML, CSS, PHP, SQL, Visual Basic, Ruby and Perl.

BAR AND COURT ADMISSIONS

Mr. Osborn is admitted to practice in the District of Columbia, Virginia, and before the U.S. Patent and Trademark Office. Mr. Osborn is a member of the Bar of the United States Supreme Court, the United States Court of Appeals for the Federal Circuit, the Eastern District of Virginia and of the District Court for the District of Columbia. Mr. Osborn has also been admitted pro hac vice at various locations around the country, including the Eastern District of Texas, the Northern District of California, the District Court of Delaware, the Southern District of New York, the Western District of Pennsylvania and the District Court of Massachusetts.

RECOGNITION

Mr. Osborn was selected as a 2013 Washington DC Super Lawyers “Rising Star,” an award given to fewer than 2.5% of eligible attorneys.