Jacob W. S. Schneider

Jacob Schneider is an intellectual property litigation attorney in Holland & Knight's Boston office. His practice focuses on patent, trademark, copyright and trade secret litigation and licensing transactions. Mr. Schneider has substantial experience in a wide variety of technologies and industries, including telecommunications, artificial intelligence (AI), transportation, computer hardware/software, web/mobile applications, voice-recognition, sporting equipment, gaming, toys and life sciences devices. He serves as the editor and a frequent contributor to the Holland & Knight IP/Decode Blog.

Mr. Schneider's educational and professional background is in computer software engineering and architecture, with a particular focus on web- and mobile-based applications. He holds a B.S. in Computer Science, Phi Beta Kappa. Prior to attending law school and throughout the course of his studies, Mr. Schneider was a software engineer that designed, developed and deployed software applications using a variety of technologies and platforms. He also managed large databases and administered application servers. In his spare time, Mr. Schneider continues to develop both internal tools for Holland & Knight as well as his own personal projects. His independent research interests are AI (including its impact on the law and legal profession) and quantum computing.

Mr. Schneider has made public service an important part of his practice. He offers intellectual property counseling to artists and creatives from marginalized communities. He has served on the Board of the Community Charter School of Cambridge, assisting the school with legal and governance issues. He has been a leader of the Boston office's efforts to lobby for additional public financing of legal services in Massachusetts since joining the firm in 2012. Before joining Holland & Knight, he served as a Special Assistant District Attorney for the Suffolk County District Attorney's Office in Boston, where he represented Suffolk County, Massachusetts in criminal matters involving violence, financial fraud and other matters. In this role, he conducted trials, evidentiary motions, arraignments and pre-trial hearings. Mr. Schneider also leads the Boston office's annual campaign for public funding of legal assistance in Massachusetts.

While attending law school, Mr. Schneider was editor-in-chief of the Boston University Journal of Science & Technology Law.

Representative Litigation Matters

Wi-LAN Inc. v. Ericsson Inc. (S.D.F.L.). Defended Ericsson, a manufacturer and seller of telecommunications infrastructure equipment to all major cellular providers, in a telecommunications patent dispute involving 4G Long-Term Evolution (LTE) radio base stations. The case implicated LTE wireless standards relating to connection maintenance between base station and in-transit user equipment as it was "handed off" from one base station to another. The case also involved the user equipment's measurement and reporting of data usage. Holland & Knight won summary judgment of non-infringement and invalidity on behalf of Ericsson.

CA, Inc. v. AppDynamics Inc. (E.D.N.Y.). Represented CA, a provider of IT management solutions, in patent-infringement and trade secret misappropriation suits against AppDynamics' application performance monitoring software. The case involved dynamic instrumentation and monitoring of compiled software byte code. The parties reached a mutual settlement prior to dispositive motions.

Clouding IP LLC v. CA, Inc. (D. Del.). Representing CA, in patent litigation brought by Clouding, a non-practicing entity. Three CA software products are accused of infringing six patents that allegedly relate to cloud computing technology. The matter has been consolidated for pretrial purposes with 13 other cases that Clouding has brought against other defendants on the same and similar patents.

Airvana Network Solutions, Inc. v. Ericsson AB and Ericsson (N.Y. Sup. Ct.). Represented Ericsson against a supplier in a breach of contract, theft of trade secret and unfair competition action brought in the Commercial Division of the New York State Supreme Court. The dispute related to integrated circuit design and whether such design was "based on" the plaintiff's design from 2000. The plaintiff brought two separate preliminary injunction motions to stop Ericsson from selling key hardware and software that is instrumental in sending data over code division multiple access (CDMA) wireless networks. The case settled favorably for Ericsson during a second hearing on preliminary injunction when it became clear that Airvana’s motion was unlikely to succeed.

Mi-Tile Ltd. v. Hasbro (E.D. Va.). Defended Hasbro in a patent dispute relating to interactive game technology. The accused products were intelligent blocks that communicated with one another using radio frequency (RF) technology during game play and presented information to users via an LCD display. Holland & Knight secured summary judgment of non-infringement for Hasbro.

James Games, Inc. v. Hasbro (C.D. Ca.). Defended Hasbro in a patent litigation relating to board games. The accused product was an updated version of the classic children's board game Sorry!, where the board changed dynamically during game play. Holland & Knight secured a favorable settlement for Hasbro.

Nuance Communications v. Vlingo Inc. (D. Mass.). Member of trial team that defended Vlingo, a Boston-based startup, against patent litigation brought by Nuance Communications. The accused technology was a mobile app for Android and iOS that allowed users to interact with their smartphones via voice recognition technology. The jury returned a verdict of "no infringement" on all asserted claims.

Trade Secret and Copyright Litigation. Defended a global leader in website building, hosting and marketing, against copyright infringement and trade secret misappropriation claims brought by former vendor. The case related to defendant's web-crawling software that is used to help its customers maximize their presence in online listings. Defending the claims required a careful examination of the parties' source code as well as an analysis of copyrightable material therein. The parties reached a mutual settlement prior to trial.

Representative Transactional Matters

Procurement of a Modernized Fare Payment System for a Major Metropolitan Transit System. Developed procurement materials, including detailed technical specifications, to modernize a major metropolitan transit system’s fare payment systems. The updated fare payment system will replace a "magstripe" system at subway terminals and buses with an "open payment" architecture. Transit passengers will be able to pay their transit fares with any form of payment media, including contactless bank cards and smartphones.

Cloud Services Procurement for a Major Metropolitan Transit System. Following the major metropolitan transit system’s selection of a cloud services provider, revised procurement materials, including technical specifications, into a master agreement for execution that conforms to regulatory requirements. The cloud services provider will host and manage the transit system’s substantial transit and personnel data.

Acquisition of Software Company. Performed due diligence of acquired client's software, which included open-source components, to determine the extent of General Public License (GPL) and Lesser General Public License (LGPL) requirements.