Jacob R. Osborn

Jacob R. Osborn

Associate
Jacob R. Osborn

Jacob R. Osborn is an associate in the firm’s Litigation Department and a member of its National Security & Foreign Trade Regulation (NSFTR) Practice and Patent Litigation Practice. Mr. Osborn is an expert in computer software and encryption, and his legal practice focuses on advising clients with respect to software and encryption matters. He joined Goodwin Procter in 2008. Prior to becoming an attorney, Mr. Osborn was a software developer for a telecommunications company. Mr. Osborn holds bachelor’s degrees in mathematics and computer science, and a master’s degree in electrical and computer engineering.

Mr. Osborn plays a prominent role in the firm’s NSFTR practice, and has advised hundreds of 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 2016 he was named as an “Associate to Watch” for his International Trade, Export Controls and Economic Sanctions practice by Chambers USA: America’s Leading Lawyers for Business.

Mr. Osborn has also 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. These cases include patent matters in jurisdictions throughout the country, as well as other litigation involving computer-related federal statutes (e.g., Computer Fraud and Abuse Act and the Electronic Communications Privacy Act). From 2013 – 2016, Mr. Osborn was selected as a Washington D.C. SuperLawyers “Rising Star” for his patent litigation practice.

Recently, Mr. Osborn successfully second-chaired a trademark case before the Supreme Court of the United States, B&B Hardware, Inc. v. Hargis Industries, Inc. (2015), an important decision on the intersection between agency decisions and IP litigation. He also successfully first-chaired a trademark opposition proceeding before the Trademark Trial and Appeal Board (TTAB).

Mr. Osborn also provides patent prosecution support at all stages of prosecution, including appeals to the Patent Trial and Appeal Board, and AIA procedures such as Covered Business Method Reviews and Inter Partes Reviews. Mr. Osborn additionally assists the firm’s Privacy & Cybersecurity Practice by providing technical and legal guidance during data privacy and breach investigations.

Professional Activities

Mr. Osborn is a member of the American Intellectual Property Law Association. 

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.

Recognition

Mr. Osborn was named as an “Associate to Watch” by Chambers USA in the category of International Trade: Export Controls & Economic Sanctions, one of only two associates nationwide to receive this honor.

Mr. Osborn was selected as a Washington DC Super Lawyers “Rising Star” from 2013 – 2016, an award given to fewer than 2.5% of eligible attorneys.

Areas of Practice

Experience

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. 13-352)
  • J.P. Morgan Chase & Co. et al. v. Intellectual Ventures II LLC (PTAB Case No. CBM2014-00157)
  • 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 hundreds 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.

Credentials

Education

J.D., 2009
American University Washington College of Law

(cum laude)

M.S., Electrical and Computer Engineering, 2009
The Johns Hopkins University, Electrical and Computer Engineering
B.S., Computer Science, 2006
Xavier University, Computer Science
B.S., Mathematics, 2006
Xavier University, Mathematics

Admissions

Bar

District of Columbia
Virginia
US Patent and Trademark Office (USPTO)

Courts

U.S. Supreme Court
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Eastern District of Virginia
U.S. District Court for the District of Columbia
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