Gerald Sobel has litigated and tried many complex cases in over 40 years of practice. His trials include landmark wins in cases of exceptional complexity and novel legal issues. By way of example, he represented Xerox in its win in the SCM v. Xerox case, including a year-long antitrust trial involving office copier technology in the District of Connecticut – the longest federal civil jury trial; was lead counsel for Xoma in its win on patent infringement against Centocor before a San Francisco jury – the longest biotech patent trial; and was lead counsel for Pfizer against the University of Rochester, in its win in the Celebrex® patent infringement case on summary judgment and then on appeal at the Federal Circuit.
He has represented a substantial number of companies in varied industries among the Fortune Global 200, as well as startups, one-product companies and major universities.
Gerald is regularly listed in the peer-based guides to leading lawyers, including Chambers USA, America’s Leading Lawyers for Business, Intellectual Asset Management (IAM), Best Lawyers in America; Top Attorneys in New York and U.S. News - Best Lawyers. Best Lawyers in America2014 awarded him “Lawyer of the Year” for Biotechnology Law in the New York City Area. Chambers USA 2014 cites sources describing him as “‘one of the top attorneys nationwide’ for patent litigation, and as special counsel continues to advise major names in life sciences on case strategy.” The 2013 publication referred to him as a “‘towering figure’ in the field of patent litigation,” and the 2012 edition mentioned his “deep[ ] experience[ ] in IP litigation,” and described him as “respected for his strong record of representing large corporations in high-value cases” and “a sage adviser.” Gerald was recognized for his work in life sciences and patent litigation by Who’s Who Legal 2013, and IAM in 2012 referred to him as “bring[ing] an almost unmatched level of experience to the table, having tried many cases in a career spanning over four decades” and being “admired for his ability to untangle the most complex technical and legal problems.”
Gerald has handled major patent and trade secret litigations in a wide variety of technologies. Biotech, pharmaceuticals and medical devices have been one emphasis, including many patent litigations concerning blockbuster small molecule and biotech drugs and diagnostics for research-based pharmaceutical and biotech companies and universities, as well as significant cases involving medical devices. A number of these cases have involved products with among the highest sales and profits in the world, multidistrict litigations, and parallel cases and trials abroad.
He has represented both patentees and alleged infringers. Gerald routinely counsels clients concerning the strength of their positions with respect to intellectual property. He is a frequent lecturer on patent topics.
Licensing, Research, Marketing and Collaboration Agreements
Gerald has negotiated, drafted, litigated and/or served as an expert witness concerning many patent and technology agreements. These have frequently been cross-licenses or collaboration agreements, international in scope and of great commercial significance. The litigated agreements, in particular, have included worldwide agreements, joint research development and marketing ventures, and research sponsorship arrangements. In this context, he has addressed contract and antitrust, as well as intellectual property issues. Gerald created and taught the course covering antitrust and its interaction with intellectual property and licensing at the NYU School of Law and has co-taught licensing subjects at the Columbia Law School. He has also negotiated and drafted significant trademark licenses.
Gerald has litigated and/or tried many important antitrust cases, including, for example, matters concerning pharmaceuticals, biotech drugs, dyestuffs, office copiers, electrical generator components, cameras and flash attachments, and gasoline. He has extensive experience in litigating and trying antitrust issues concerning patents and licensing. He has represented both antitrust plaintiffs and defendants. Gerald has been a frequent lecturer on antitrust topics.
Trademark and Commercial Litigation
Gerald has also handled significant trademark and trade dress cases, as well as a variety of commercial litigations, including contract and real estate cases involving the redevelopment of Times Square and related First, Fifth and Fourteenth Amendment issues.
Arbitration, Mediation and Settlement
Gerald is a mediator in private patent and commercial disputes, including in the mediation program at the United States District Court for the Southern District of New York. As a litigator, Gerald has negotiated settlements of many cases and he has also represented clients at significant arbitrations and mediations. He has written and lectured on innovative alternative forms of dispute resolution in complex litigation for the Center for Public Resources.
Trials and Appeals
Gerald has tried cases throughout the country, including New York, Hartford, San Francisco, Seattle, Puerto Rico, Cincinnati and Salt Lake City. He has been active in appellate matters as well, particularly at the Court of Appeals for Federal Circuit.
Academic and Professional Activities
Gerald's activities have included the following: member of the Advisory Committee on Patent Litigation of the U.S. District Court in Delaware; member of the Advisory Board of the Lamont-Doherty Earth Observatory at Columbia University; member of the Advisory Committee of the Engelberg Intellectual Property Institute at the NYU School of Law; and adjunct faculty member at the NYU School of Law and Columbia University School of Law. He has also lectured at the Stanford, George Washington, Fordham, Brooklyn, Case Western and Washington University (St. Louis) Law Schools.
Gerald has published numerous papers in law reviews and other publications on topics relating to patents, antitrust, licensing, joint ventures and alternative dispute resolution (ADR). To illustrate, these include the following: Consideration of Patent Validity in Antitrust Cases Challenging Settlements, Fed. Cir. B.J. Vol. 20, Nos. 1 and 2 (2010); Reconsidering the Scope of the Inequitable Conduct Doctrine, Fed. Cir. B.J. Vol. 18, No. 2 (2009); Hatch-Waxman Litigation, Chapter 7 (re settlements), Patent Lit. Strategies (BNA 2005–10); Chapter 3, Looking Back Over the Patent/Antitrust Interface, Perspective on the Human Genome Project (Vol. 50 Advances in Genetics 2004); Patent Scope and Competition: Is the Federal Circuit's Approach Correct?, 7 VA. J.L. & Tech. 3 (Spring 2002).
Gerald has delivered well over 100 lectures at continuing legal education programs at bar associations and law schools on litigation, patent, antitrust, licensing, ADR, jury trials and trade secrets topics. He testified at the FTC hearings on the patent-antitrust interface and before congressional committees on antitrust legislation concerning joint research.