Frank M. Gasparo
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.
Related Practices
Experience
Representative Matters
- 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 a major banking institution against a 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 actions 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 manages their global intellectual property protection and enforcement efforts strategically
- 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 ITC concerning the construction of physiological shoes
- 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
- Represented a private school in a gender discrimination action involving multiple federal and state counterclaims of computer fraud, before the District of Connecticut
- 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
- Served as lead counsel for a major U.S. financial services institution in a patent infringement action concerning check processing, 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
- 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
- Teaches patent law as an adjunct professor at various New York City-area law schools
Recognition
- Legal 500, Intellectual Property – Patents: Litigation, 2020 – 2021
- IAM Patent 1000, The World’s Leading Patent Professionals, 2013 – 2019, 2021