Gerald Porter

Gerald E. Porter has a broad-based intellectual property practice encompassing a mix of litigation, prosecution and transactional matters. Jerry translates complex issues into both understandable themes and actionable advice that resonate with clients, judges and juries.

Jerry helps clients navigate a wide range of intellectual property issues and offers practical counsel on litigation, prosecution and transactional matters. Jerry is a registered practitioner with the U.S. Patent and Trademark Office and has experience prosecuting patent applications in a wide variety of technology areas.

Jerry has also litigated before U.S. district courts, the U.S. Patent Trial and Appeal Board, and the Federal Circuit. Jerry draws on his experience as an extern for the Honorable Sally D. Adkins of the Court of Appeals of Maryland, where he engaged on issues of first impression in the state of Maryland.

Representative Matters :

• Representing a pharmaceutical client in Hatch-Waxman litigations, including preparing expert witnesses for direct and cross-examination, analyzing and developing validity and infringement arguments, and performing post-TC Heartlandvenue analysis.
• Drafted a trademarkability opinion with respect to the signature cookie of a world-renowned bakery, including creating trademark protection strategy recommendations based on current product design and product packaging trademark and trade dress precedent.
• Assisted in representing a pharmaceutical client at trial in the district of Massachusetts and in the subsequent appeal, including drafting briefs and motions on topics including conception, enhanced damages and attorney fees.
• Drafted a patent owner’s preliminary response and worked closely with the expert on his accompanying expert declaration in response to an inter partes review petition, including performing the initial validity analysis and distinguishing the identified prior art references.

Professional and Community Involvement :

• Member, New York Intellectual Property Law Association
• Member, Intellectual Property Law Section, American Bar Association
• Associate Member, Honorable William C. Conner Inn of Court
• Pro Bono Counsel, Kids in Need of Defense (“KIND”)

EDUCATION :

• George Washington University Law School, J.D., 2016
• Washington University in St. Louis, B.S., 2011

BAR ADMISSIONS : New York, U.S. Patent and Trademark Office

COURT ADMISSIONS :

• U.S. Court of Appeals for the Federal Circuit
• U.S. District Court for the Northern District of New York
• U.S. District Court for the Southern District of New York
• U.S. District Court for the Eastern District of New York