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| Selected by peers as a Leading Lawyer in: | Extensive Experience in: |
| Computer & Technology Law | Intellectual Property Law |
| Intellectual Property Law | Patents |
| Trademarks | |
| Copyrights | |
| Internet Law |
Mr. Gerstman is a partner in the Seyfarth Shaw law firm and has practiced in intellectual property law for over 35 years. He is registered to practice before the United States Patent and Trademark Office and is a former United States patent examiner. As a Patent Examiner, he examined hundreds of patent applications. As a patent attorney since 1964, he participated in the preparation and prosecution of hundreds of patents. He has handled numerous Patent Office appeals, interferences, reissues, and reexamination proceedings. He has been lead counsel in the litigation of numerous patents, has counseled clients with respect to the issues of infringement and validity, has negotiated numerous patent licenses, has been an expert witness in many patent infringement suits, and has given lectures on patent law topics. Among some of his noteworthy patent cases, Mr. Gerstman represented Peter Roberts in the famous "quick release wrench" case against Sears Roebuck. He represented Ventritex, Inc. in a landmark case on the scope of the medical device immunity statute in the patent laws during clinical trials; he represented Data General Corp. in a patent infringement suit on a patent for cassette storage of digital data; he represented Arrowhead Industrial Water, Inc. in a significant declaratory judgment action involving a patent relating to a deoxygenation process; he represented Tokheim, Inc. in a patent infringement suit on a patent for a computerized gasoline pump; he represented numerous companies in patent infringement lawsuits on the basic video game patent; he represented Diamedix Corporation in a significant case establishing when a patent owner is an indispensable party in a suit brought by a licensee; he represented Federal Signal Corporation in a patent infringement suit concerning railroad crossing gate arms; he represented Cordis Corporation in an International Trade Commission proceeding concerning a dual chamber pacemaker; and he represented JS & A Group, Inc. in a landmark case establishing Federal Circuit jurisdiction in lawsuits including a patent infringement count.
Mr. Gerstman has participated in the preparation and prosecution of hundreds of applications for trademark registration. In this regard, he has handled numerous Patent Office appeals, opposition proceedings and cancellation proceedings. He has been lead counsel in the litigation of numerous trademark matters, and he has counseled clients with respect to various significant trademark issues.
Mr. Gerstman has been lead attorney in numerous cases in which suits were filed under the trademark laws against trademark infringers. Among some of his noteworthy trademark cases, he represented Ringling Brothers in lawsuits that prevented defendants from using slogans similar to "The Greatest Show on Earth." He represented BluBlocker Corporation in stopping numerous infringers from using the terms BluBlocker and SunBlocker on sunglasses. He has handled lawsuits relating to Internet and domain name issues, generic or descriptive trademarks, and issues relating to priority of use of a trademark within different states throughout the United States. In an Internet-related case in which he represented Crate & Barrel, a federal court in Illinois held that it had personal jurisdiction over a foreign defendant who used the name "Crate and Barrel" and had an interactive Web site allowing Illinois residents to order goods from Illinois. He has obtained injunctions and has obtained restraining orders and seizure orders against trademark infringers, in which United States Marshals have seized counterfeit trademark goods.
Mr. Gerstman has also participated in the preparation and prosecution of numerous copyright applications. He was lead attorney in the first case to consider copyrightability of computer software. He was also lead attorney in the landmark case holding video games to be copyrightable and was lead attorney in the first case considering the "computer program backup copy" exception to the copyright laws. He was instrumental in convincing the Copyright Office personnel to register copyrights on software embodied in ROMs and PROMs. He was lead attorney in numerous cases in which suits were filed under copyright laws against video game copiers; he obtained restraining orders, seizure orders and he accompanied the United States Marshals seizing dozens of bootleg video games in various cities throughout the United States.
While an undergraduate student at the University of Illinois, Mr. Gerstman programmed early digital computers, including the Illiac and the IBM 650. In the early years of solid state circuits, he fabricated semiconductor diodes at the Sylvania Semiconductor Laboratory. As a patent examiner at the United States Patent Office, he examined patent applications primarily relating to inductor devices and voltage regulation circuits.
Notable Cases and Results:
Abbott Laboratories v. Ortho Diagnostic Systems Inc. , Fed. Cir. 1995: Obtained favorable decision from Federal Circuit in significant case concerning patent owner's standing to intervene in patent case brought by exclusive licensee.
Arrowhead Industrial Water Inc. v. Ecolochem, Inc. , Fed. Cir. 1988: Obtained favorable decision from Federal Circuit in significant decision regarding jurisdiction in declaratory judgment patent case.
Atari, Inc. v. JS & A Group, Inc. , Fed. Cir. 1984: Obtained favorable decision from Federal Circuit in landmark case concerning jurisdictional issue.
Data Cash Systems, Inc. v. JS & A Group, Inc. , 7th Cir. 1980: Landmark case concerning the issue of copyright-ability of computer programs. Obtained summary judgment.
Dataq, Inc. v. Tokheim, Inc. , N.D. Okla. 1985: Successfully defended Tokheim in jury trial for patent infringement (patent for computerized gasoline pump).
Electronic Processors Incorporated v. Redactron Corporation and Data General Corp. , N.D. Illinois 1976: Successfully defended Data General Corp. in trial for patent infringement (patent for digital data storage).
Euromarket Designs Inc. v. Crate & Barrel Ltd. , N.D. Illinois 2000: Obtained favorable decision relating to jurisdiction over foreign companies selling products over the Internet.
Roberts v. Sears Roebuck & Co. , N.D. Illinois 1989: Represented patent owner in jury trial concerning famous quick release wrench patent; confidential settlement by Sears after week of trial.
Rowe v. Dror, Fed. Cir. 1997: Obtained reversal of Patent Office ruling in significant patent claim interpretation case.
Safetran Systems Corporation v. Federal Sign & Signal Corporation et al. , N.D. Illinois 1981: Successfully defended Federal Signal in trial for patent infringement (patent for railroad gate arms).
Stern Electronics, Inc. v. Kaufman et al. , 2nd Cir. 1982: Landmark case holding video games to be copyrightable. Obtained an injunction against video game copiers.
Telectronics Pacing Systems Inc. v. Ventritex, Inc. , Fed. Cir. 1992: Obtained favorable decision from Federal Circuit in significant decision concerning patent infringement exemption during clinical trials of medical devices.
Bar Admissions:
Illinois
U. S. Supreme Court; Court of Appeals for the Federal Circuit, Second Circuit, Third Circuit and Seventh Circuit
Trial Bar of United States District Court for the Northern District of Illinois
Date of Birth: 1939
Law School: George Washington University,J.D.
Law School Honors/Involvement: With honors; assistant patent editor, George Washington Law Review; Order of the Coif; Mary Covington Memorial Scholarship
Undergraduate School: University of Illinois; B. S. in electrical engineering
Representative Clients:
Cordis Corporation; Crate & Barrel; Gold Eagle Co.; International Game Technology; Mi-Jack Products, Inc.; Mobile Mark, Inc.
Bar/Professional Association Involvement:
American Bar Association; Chicago Bar Association; American Intellectual Property Law Association; Intellectual Property Law Association of Chicago
Firm Description: Seyfarth Shaw was founded in 1945 in Chicago by three lawyers and has grown to more than 700 lawyers across ten offices. Our practice spans the United States and, through our international affiliations and European office, we provide our clients with a global presence. We handle issues for our clients in all key areas including commercial litigation, construction, corporate and finance, employee benefits, environmental, government contracts, intellectual property, labor and employment, real estate, securities litigation, trade secrets, trusts and estates, and workouts and bankruptcy, among others.
Our success is the result of a constant, unrelenting focus on the needs of our clients. Our commitment to excellence and our belief in the strength of a team-based approach to the delivery of our services offers an atmosphere of creative and innovative thinking.
Our clients are our partners in business and we commit to listen to their needs and to align the skills and abilities of our people to respond to those needs. Our clients range from Fortune 100 to midsize companies, and include publicly traded and privately held companies. We represent clients in all industries and in all geographies and we are diligent in providing the same level of commitment to each client.
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