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   3Robert M. GersteinChicago(312) 474-6300rgerstein@marshallip.comrgerstein@marshallip.comMarshall Gerstein & Borun LLPwww.marshallip.comwww.marshallip.comgersteinrobert.jpgCopyright & Trademark LawIntellectual Property LawPatent LawTrade Secrets/Unfair Competition LawCopyrightsIntellectual Property TransactionsPatent ProsecutionTrade SecretsTrademarks
Robert M. Gersteinrgerstein@marshallip.com
Marshall Gerstein & Borun LLPhttp://www.marshallip.com
233 S Wacker Dr Ste 6300
Chicago IL 60606
Ph.(312) 474-6300 Fx.(312) 474-0448
Recommended by peers in:    Extensive Experience in:
Copyright & Trademark Law    Copyrights
Intellectual Property Law    Intellectual Property Transactions
Patent Law     Patent Prosecution
Trade Secrets/Unfair Competition Law     Trade Secrets
    Trademarks
Advisory Board Member
County:  Cook
Litigator:  Yes

Practice Description:  
Robert M. Gerstein has been with Marshall, Gerstein & Borun since 1988 and has been a partner since 1995. His practice focuses on transactions involving intellectual property, particularly patent and trademark licenses. He also is involved in patent, trademark, copyright, unfair competition and contract litigation, and has experience in patent and trademark prosecution. Mr. Gerstein is also currently a member of the firm's executive committee.

Mr. Gerstein strives to get a deep understanding of each client's business and technology, so that he can provide advice that is not only legally accurate, but that is also practical and economical for that client's business. The best solution for one client may not work for another due to their size, corporate cultures, product types and competitive landscape. Knowing as much as possible about the client leads to a recommendation that the client can use most easily, while still affording the best legal protection.

Mr. Gerstein has prepared numerous legal opinions for clients, primarily involving patent validity, patent infringement or patentability. He has also provided opinions for due diligence of intellectual property transactions, as well as the intellectual property aspects of mergers, acquisitions and public offerings. His patent prosecution work relates to United States, foreign and international patent applications and has included reexaminations and appeals before the Board of Patent Appeals and Interferences.

Technological subject matters with which he has dealt include:
  • Computer and software
  • Medical devices
  • Vacuum cleaners
  • Superconductors
  • Video games
  • Radio Frequency Filters


Notable Cases and Results:  
Ballard Medical Products v. Bissell Medical Products*
U.S. District Court, District of Utah
Case Type(s): Patent Infringement
Area(s) of practice: Mechanical Arts

Berfield* v. White Consolidated Industries
Case Type(s): Arbitration
Area(s) of practice: Intellectual Property Transactions

Carrot Top, Inc. v. KES Irrigation Systems, Inc.*
U.S. District Court, Northern District of Georgia
Case Type(s): Patent Infringement
Area(s) of practice: Mechanical Arts

Directed Electronics, Inc. v. Code Alarm, Inc.*
U.S. District Court, Southern District of California
Case Type(s): Patent Infringement
Area(s) of practice: Electrical Arts/Computer Software

Dynamic Graphics, Inc.* v. Goldmind Publishing
Illinois State Court
Case Type(s): Copyright Infringement
Area(s) of practice: Copyrights

Gatsby's Inc.* v. Robert Bruce, et al.
Illinois State Court
Case Type(s): Trademark Infringement
Area(s) of practice: Trademarks

Ghirardelli Chocolate Company et al.* v. Kroger et al.
U.S. District Court, District of Oregon
Case Type(s): Trademark Infringement
Area(s) of practice: Trademarks

Johnson & Johnson v. The Procter and Gamble Co.*
U.S. District Court, District of Colorado
Case Type(s): Patent Infringement
Area(s) of practice: Chemistry/Chemical Engineering

JVM Innovations, LLC v. Spalding & Evenflow Companies v. Kolcraft Enterprises, Inc., et al.*
U.S. District Court, District of Ohio
Case Type(s): Trade Secrets, Unfair Competition
Area(s) of practice: Mechanical Arts, Trade Secrets

Kitchens of Sara Lee, Inc.* v. Sar A Lee, Inc.
U.S. District Court, Northern District of Illinois
Case Type(s): Trademark Infringement, Trade Dress
Area(s) of practice: Trademarks

Nabisco, Inc. v. Trolli, Inc.*
U.S. District Court, District of New York
Case Type(s): Trade Dress
Area(s) of practice: Litigation

National Gypsum Co.* v. Centex American Gypsum
U.S. Bankruptcy Court, Northern District of Texas
Case Type(s): General Civil Litigation
Area(s) of practice: Litigation

Oscar Mayer v. Sara Lee*
U.S. District Court, Eastern District of Wisconsin
Case Type(s): Trademark Infringement, Trade Dress, Patent Infringement
Area(s) of practice: Mechanical Arts

Oscar Mayer, Inc. v. Sara Lee Corp.*
U.S. District Court, Eastern District of Wisconsin
Case Type(s): Copyright Infringement
Area(s) of practice: Litigation, Copyrights

Paddock Pool Equipment, Inc.* v. Kiefer
Chancery Division, Circuit Court of Cook County
Case Type(s): Patent Infringement
Area(s) of practice: Mechanical Arts, Litigation

Precor Incorporated v. Sports Art Industrial Co., LTD*
U.S. District Court, Washington
Case Type(s): Patent Infringement
Area(s) of practice: Litigation, Mechanical Arts

Schwinn Cycling and Fitness* v. Mad Dogg Athletics
U.S. Bankruptcy Court, Colorado
Case Type(s): General Civil Litigation
Area(s) of practice: Litigation

Sitrick* v. Electronic Arts, Inc.
U.S. District Court, Chicago
Case Type(s): Patent Infringement
Area(s) of practice: Electrical Arts/Computer Software, Litigation

Sitrick* v. Nintendo of America, Inc. and Sega of America, Inc.
U.S. District Court, Northern District of Illinois
Case Type(s): Patent Infringement
Area(s) of practice: Litigation, Electrical Arts/Computer Software

Stars Beverages v. Ghirardelli Chocolate Company*
U.S. District Court, Minnesota
Case Type(s): Trademark Infringement
Area(s) of practice: Trademarks, Litigation

The Bradbury Company* v. ASC Machine Tools, Inc.
U.S. District Court, District of Kansas
Case Type(s): Patent Infringement
Area(s) of practice: Litigation, Mechanical Arts

The Procter & Gamble Company* v. ICD Industries
U.S. District Court, District of Pennsylvania
Case Type(s): Patent Infringement
Area(s) of practice: Mechanical Arts, Litigation

The Procter & Gamble Company* v. Johnson & Johnson
U.S. District Court, District of Wisconsin
Case Type(s): Patent Infringement
Area(s) of practice: Mechanical Arts, Litigation

Toro Co. v. McCulloch Corp.*
U.S. District Court, District of Minnesota
Case Type(s): Patent Infringement
Area(s) of practice: Litigation, Mechanical Arts

Virtual World Entertainments Music, Inc. v. Bob Bejan* and Controlled Entropy*
U.S. District Court, Northern District of Illinois
Case Type(s): Licensing
Area(s) of practice: Electrical Arts/Computer Software, Litigation, Trade Secrets

*Party Represented


Bar Admissions:  
Admitted to practice pro hac vice in various district courts throughout the United States
The State of Illinois, 1988
The United States District Court for the Northern District of Illinois
The United States Patent and Trademark Office


Retainer:  Varies By Case

Date of Birth:  1963

Law School:  University of Michigan Law School,J.D., 1988
Law School Honors/Involvement:  cum laude

Undergraduate School:  University of Michigan, B.S.E., Nuclear Engineering, 1985
Undergraduate School Honors/Involvement:  with honors

Representative Clients:  
Baxter Healthcare, Shop-Vac Corporation, University of Michigan


Bar/Professional Association Involvement:  
Mr. Gerstein is a member of the Chicago Bar Association, the Illinois State Bar Association, the American Bar Association and the Intellectual Property Law Association of Chicago.


Community Involvement:  
Mr. Gerstein is an active member of the Leukemia Research Foundation, Near North Montessori Building Committee, and The Executives Club of Chicago.


Published Legal Writing:  
"Record Retention for University Technology Transfer Offices," with Richard Brandon, Association of Technology Transfer Managers (AUTM), 2005.


Legal Lectures:  
National Institutes of Health Symposium on Otitus Media Speech on Licensing and Patent Pools, 2004.


Firm Description:  
Marshall, Gerstein & Borun LLP was founded more than 50 years ago and provides a full range of intellectual property legal services for domestic and international clients. The firm specializes in the clearance, registration, protection and enforcement of patents, trademarks, copyrights, trade secrets, and other forms of intellectual property, and in the acquisition and licensing of intellectual property. Firm attorneys have extensive litigation experience in United States courts, and before the United States and foreign Patent and Trademark Offices, the International Trade Commission, and arbitration tribunals. The Firm also assists clients in obtaining patent and trademark protection, and litigating intellectual property matters on behalf of plaintiffs and defendants in more than 100 countries on six continents. Marshall, Gerstein & Borun's patent prosecution and litigation services encompass all areas of technology, including the electronic, mechanical, chemical and biological sciences, e.g., protein chemistry, molecular biology, immunology, pharmaceuticals, and all recombinant technologies.


Family:  
Married with two children
1055463
Map to Office:   Click here to view map

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