Frank M. Gasparo
Frank has been lead counsel in several post-grant proceedings since they were instituted under the America Invents Act (AIA). Using his experience before the U.S. Patent and Trademark Office (USPTO) and in all aspects of litigation, Frank assists clients with 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 IP focus, he views each client's portfolio with an eye to harvesting, protecting, and monetizing their IP assets, as well as avoiding infringement of third-party IP 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 IP 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.
Related Practices
Experience
Representative Matters
- Defending a railroad company in the Southern District of New York accused of infringing patents for railway control systems
- Defending a streaming media service company against a nonpracticing entity in the Northern District of California, including inter partes review proceedings before the Patent Office, after successfully transferring the case out of the Eastern District of Texas
- Defending a global industry-leading information technology company against a nonpracticing entity in the Eastern District of Texas and District of Delaware after successfully moving to stay and to transfer, respectively, including parallel inter partes review and ex parte reexamination proceedings before the Patent Office
- Represents various well-known global brands and strategically manages their global intellectual property protection and enforcement efforts
- Successfully defended a media technology company against a nonpracticing entity in the Central District of California in relation to digital video libraries and archiving, including parallel inter partes review and ex parte reexamination proceedings before the Patent Office
- Successfully defended an appeal before the U.S. 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 Patent Office
- Secured an inter partes review win before the Patent Office by invalidating all challenged claims of the opponent's wireless technology patent
- Represented a major banking institution against a nonpracticing entity in the U.S. District Court for the District of Delaware and invalidated all claims of three asserted patents on 35 U.S.C. § 101 grounds at the pleadings stage
- Represented innovator pharmaceutical companies against multiple international online retailers in patent and trademark actions in the U.S. District Court for the District of Kansas and successfully removed all infringing products from the market
- 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
Insights
Credentials
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. Court of Appeals for the Federal Circuit
- U.S. District Court for the Eastern District of Texas
Professional Memberships and Activities
- Section on Business Law and International Law, American Bar Association
- New York State Bar Association
- Connecticut Bar Association
- New York Intellectual Property Law Association
- Teaches patent law as an adjunct professor at various New York City-area law schools
Recognition
- Legal 500, Intellectual Property – Patents: Litigation, 2020 – 2023
- IAM Patent 1000, The World’s Leading Patent Professionals, 2013 – 2019, 2021 – 2023