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Jason Sobel

SPECIAL COUNSEL, NEW YORK



Jason Sobel counsels companies involved in a wide range of industries and technological disciplines, including financial service companies, software and internet companies, manufacturers of mechanical and electrical devices, manufacturers and suppliers of food ingredients, food products, and consumer products. His practice involves all areas of intellectual property law, including advocating and counseling clients in litigation, transactional, prosecution and other strategic matters.

Mr. Sobel has served as trial counsel through trial and appeal in federal and state courts, and before the International Trade Commission. Mr. Sobel has represented clients in a variety of actions, including claims of patent, copyright and trademark infringement, misappropriation of trade secrets, breach of contract, unfair competition, fraud and commission of other business torts.

Mr. Sobel also structures, prepares and negotiates intellectual property, technology, service, and supply agreements in connection with standalone and large corporate transactions. He has extensive experience performing intellectual property and information technology due diligence and providing related advice in connection with corporate transactions and internal company audits of intellectual property.

Mr. Sobel also counsels clients concerning their intellectual property portfolios, and prepares and prosecutes patent, trademark and copyright applications. Additionally, he has experience developing, drafting and implementing employee intellectual property ownership and information systems policies, and advising clients concerning data privacy, open source software, computer fraud, source code and other issues related to outsourcing, computer software and information technology.

Representative Matters

  • PODS Enterprises, Inc. v. U-Haul, Inc., M.D. Fla. – Represented PODS in a trademark infringement action relating to portable moving and storage containers. Second chair in a two-week jury trial resulting in a verdict of over $60 million for our client, finding for our client on all counts.
  • XpertUniverse v. Cisco Systems, Inc., D. Del. – Represented XpertUniverse in a patent infringement and fraud case. Second chair in a two-week jury trial resulting in a verdict of over $70 million for our client, finding the patents were valid and infringed and that Cisco had committed fraud. The court sustained the jury verdict with regard to the patent claims but overturned the fraud claim. The National Law Journal ranked the $70 million jury verdict in the top 5 IP verdicts in 2013. Case is on appeal.
  • Thomas & Betts Corp. v. Richards Manufacturing Co., et al., D.N.J. – Represented Richards Manufacturing in a theft of trade secret and breach of duty of loyalty case relating to rubber injection molding processes for high voltage underground electrical connectors. During five-week jury trial, presented direct testimony and cross-examined witnesses, first chaired jury charging conference concerning issues of first impression. Case settled.
  • Altvater Gessler- J.A. Baczewski v.Sobieski Destylarnia et al, S.D.N.Y. – Represented Sobieski in trademark infringement and trade secret misappropriation action relating to distilled spirits. Jury decided all matters in our client’s favor.
  • Honeywell Int’l, Inc. v. Nikon Corp., FUJIFILM Corporation and FUJIFILM U.S.A., Inc. et al., D. Del. – Represented Fuji in patent infringement action, obtaining summary judgment of patent invalidity on patent related to liquid crystal displays. Affirmed after appeal.
  • L'Oréal S.A. and L'Oréal USA, Inc. v. Merck and Co., Inc., Merck Sharp & Dohme Corp and MSD Consumer Care, Inc., D. Del. – Representing Merck in patent infringement action relating to sunscreen technology.
  • Thomas Publishing Company LLC v. Technology Evaluations Centers Inc., S.D.N.Y. – Represented Technology Evaluations Centers Inc. in copyright infringement action concerning competitor’s database. Case settled before trial.
  • Neurografix et al. v. Cornell University; New York Presbyterian Healthcare Systems, Inc. and Weill Cornell Imaging at New York Presbyterian, S.D.N.Y. – Represented Defendants in patent infringement action relating to MRI technology. Obtained full dismissal prior to first multi-district litigation deadline.
  • Represented Fuji Photo Film Co. campaign to enforce group of pioneering patents for single-use cameras in federal trial and administrative courts and through U.S. Customs. Client obtained ITC general exclusion order, followed by several administrative decisions and verdicts in its favor.
  • Digital Angel Corp. v. Datamars SA, et al., D. Minn. – Represented Digital Angel in a patent infringement action on a patent relating to passive Radio Frequency Identification (RFID) technology for companion animal tracking. Case settled before trial.
  • Represented FUJIFILM Medical Systems in its acquisition of Empiric System LLC, providers of medical imaging and information systems.
  • Represented Nomura Holding America, Inc. and Nomura Securities International Inc. in connection with negotiation agreements providing access to trading platforms and other services.

Honors and Awards

  • New York City Bar Association Inaugural Jeremy G. Epstein Award for Outstanding Pro Bono Service, 2009
Activities
Speeches and Events
  • Presenter, "IP Protection for Financial Indices," August, 2007
  • Presenter, "Intellectual Property for the Micro-Entrepreneur," Biannual for the Legal Aid Society and New York City Bar Association
Publications
  • "Protecting the Confidentiality and Value of Sensitive Data and Intellectual Property," Chapter 1, Best Practices for Data Protection and Privacy, Aspatore, 2009
  • "In re Bilski: Federal Circuit Addresses Standard for Patentability of Business Methods," Stroock Special Bulletin, November 2008
  • "Enforcement Issues Raised By Geographically Descriptive Marks: The Hypothetical Case of the Fictitious Emerald Island," The Intellectual Property Strategist, June 2008
  • "Gone in a Flash: What Your Employees May Be Storing on That iPod and Its Relationship to the Computer Fraud and Abuse Act," Privacy & Data Security Law Journal, May 2008
  • "KSR International Co. v. Teleflex, Inc.: Throttling Back a Rigid Approach to Obviousness," Stroock Special Bulletin, May 9, 2007
Admitted to Practice
New York
U.S. Patent and Trademark Office; U.S. District Court, Southern District of New York; U.S. District Court, Eastern District of New York; U.S. Court of Appeals, Third Circuit
Patent Admissions
U.S. Patent and Trademark Office
Education
J.D., Fordham University School of Law, 2003
B.S.E., University of Pennsylvania, 2000
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