Frank Gasparo

Venable LLP

$ $$$

6th Avenue 1270
New York 10020 NY US

Frank M. Gasparo serves as the head of Intellectual Property for Venable’s New York Office and co-chair of the IP Litigation Practice Group. Frank’s practice encompasses both intellectual property litigation and proactive management of intellectual property portfolios.

He represents local and international companies as plaintiffs and defendants in patent, trademark, and trade secret misappropriation disputes across the country. Frank’s litigation and trial representations have resulted in numerous favorable published and unpublished district court and Federal Circuit decisions.

As a patent litigator, Frank has litigated cases before the International Trade Commission (ITC). He has also been lead counsel in several post-grant proceedings since instituted under the America Invents Act (AIA).

Using his experience before the U.S. Patent and Trademark Office and in all aspects of litigation, Frank assists clients with making strategic decisions under these new proceedings, which has resulted in numerous favorable outcomes for his clients.

Outside of the courtroom, Frank proactively works with clients to protect their innovations. As a business lawyer with an intellectual property focus, he views each client’s portfolio with an eye towards harvesting, protecting, and monetizing their intellectual property assets, as well as avoiding infringement of third-party intellectual property rights.

His related experience in copyright, trademark and trade dress, e-commerce, and privacy issues enables him to counsel clients on the broad range of issues that might relate to their intellectual property portfolios.

Frank’s clients span a range of industries, including luxury and consumer goods, media, entertainment, fashion, financial products and services, electronics, and computer hardware and software.

He has taught patent law as an adjunct professor of law in New York City. He is a frequent speaker on IP-related topics.

Experience :

  • Successfully defended an appeal before the United States Court of Appeals for the Federal Circuit, following invalidation of all asserted claims of the opponent’s patent in an inter partes review proceeding before the PTAB
  • Secured an inter partes review win before the PTAB by invalidating all challenged claims of the opponent’s wireless technology patent
  • Represented innovator pharmaceutical companies against multiple international online retailers in patent and trademark actions in the United States District Court for the District of Kansas, and successfully removed all infringing products from the market
  • Represents a diverse client base, including financial institutions, consumer good companies, and media and entertainment companies, in patent infringement actions throughout the country
  • Represented a German software and database company in multiple litigation matters before a federal district court, concerning trademark laws, and in a distribution agreement between several European and South American countries
  • Served as lead counsel for a French smart card manufacturer in a patent infringement action concerning the manufacturing process and construction of smart cards, before a federal district court.

Education :

  • J.D. honors Brooklyn Law School 1998
  • B.E.E. cum laude State University of New York at Stony Brook 1995

Bar Admissions :

  • New York
  • Connecticut
  • U.S. Patent and Trademark Office

Court Admissions :

  • U.S. Supreme Court
  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Eastern District of Texas

Professional Memberships :

  • Member, American Bar Association, Section on Business Law and International Law
  • Member, New York State Bar Association
  • Member, Connecticut Bar Association
  • Member, New York Intellectual Property Law Association

Cost

Rate : $$$$

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