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

Education

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

Memberships

  • American Bar Association, Section on Business Law & International Law

    New York State Bar Association

    Connecticut Bar Association

    New York Intellectual Property Law Association
T +1 212.370.6273
F +1 212.307.5598
 

Frank M. Gasparo

Partner

Frank 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 Frank's litigation and trial representations have resulted in numerous favorable published and unpublished district court and Federal Circuit decisions.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, 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.

Significant Matters

  • Successfully defended appeal before the United States Court of Appeals for the Federal Circuit following invalidation of all asserted claims of opponent’s patent in Inter Partes Review proceeding at the United States Patent and Trademark Office Patent Trial Appeal Board.
  • Secured Inter Partes Review win before the United States Patent and Trademark Office Patent Trial Appeal Board by invalidating all challenged claims of opponent’s wireless technology patent.
  • Represented major banking institution against patent assertion entity in the United States 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 action in the United States District Court for the District of Kansas and successfully removed all infringing products from the market.
  • Represents various well-known, global brands and strategically manages their global intellectual property protection and enforcement efforts.
  • Represents a diverse client base, including financial institutions, consumer good companies and media and entertainment companies, in patent infringement actions throughout the country.
  • Served as lead counsel for a Swiss footwear company in a patent infringement action before a federal district court and the International Trade Commission concerning the construction of physiological shoes.
  • Represented a German software and database company in multiple litigations before a federal district court concerning trademark laws and a distribution agreement of several European and South American countries.
  • Represented a private school in a gender discrimination action before the District of Connecticut involving multiple federal and state counterclaims for computer fraud.
  • Retained as lead counsel for a French smart card manufacturer in a patent infringement action before a federal district court concerning the manufacturing process and construction of smart cards.
  • Acted as lead counsel for a major US financial service institution in a patent infringement action before a federal district court concerning check processing.