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Jacob Osborn is an associate in the firm’s Litigation Department and a member of its Patent Litigation Practice and National Security & Foreign Trade Regulation (NSFTR) Practice. He joined Goodwin Procter in 2008. Since 2008, Mr. Osborn has provided patent litigation support in over a dozen cases involving 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 new AIA procedures such as Covered Business Method Reviews.

Mr. Osborn has successfully first- chaired a trademark opposition proceeding, and is currently second chairing a trademark case before the Supreme Court of the United States on the preclusive effect of TTAB decisions on likelihood of confusion. In his capacity as a member of the firm’s NSFTR practice, Mr. Osborn regularly advises clients regarding regulatory compliance with the Export Administration Regulations (EAR), the International Traffic in Arms Regulations (ITAR) of the State Department, economic sanctions administered by the Office of Foreign Assets Control (OFAC), and the Committee on Foreign Investment and the United States (CFIUS), particularly with respect to electronics, telecommunications, software, and encryption items.

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, active noise-cancelling technologies in digital headphones, 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:

  • B&B Hardware, Inc. v. Hargis Industries, Inc. (U.S. Supreme Court Case No. 13-35)
  • In re Certain Noise Cancelling Headphones and Components Thereof (Bose v. Beats) (ITC Inv. No. 337-TA-927)
  • In Re: Maxim Integrated Products, Inc., MDL No. 2354 (W.D. Pa.)
  • Encyclopaedia Britannica v. Dickstein Shapiro (D.D.C.)
  • 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, ITAR, and OFAC.

Mr. Osborn was selected as a 2013 and 2014 Washington DC Super Lawyers “Rising Star,” an award given to fewer than 2.5% of eligible attorneys.

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.


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).

Mr. Osborn appeared on an expert panel entitled “Encryption Controls and Ensuring Compliance” in conjunction with the Massachusetts Export Center in June, 2014.