Mr. Gerstein has handled transaction and opinion matters for many client technologies, including:
- Computers and software
- Pharmaceuticals
- Medical devices
- Vacuum cleaners
- Superconductors
- Video games
- Radio frequency filters
In addition to his client counseling and work on transactions and licenses, Mr. Gerstein is involved in patent, trademark, copyright, unfair competition and contract litigation. He has prepared numerous legal opinions for clients, primarily involving contract interpretation, patent validity, patent infringement or patentability. He has also conducted due diligence for intellectual property transactions, as well as the intellectual property aspects of mergers, acquisitions and public offerings.
His experience also includes patent and trademark prosecution. The patent prosecution work relates to U.S. foreign and international patent applications and has included reexaminations and appeals before the Board of Patent Appeals and Interferences.
Mr. Gerstein strives to get a deep understanding of each client’s business and technology, and integrate all aspects of IP with the organization’s business goals. The best solution for one client may not work for another due to their size, corporate cultures, product types and competitive landscape. Applying a concerted and analytical approach, he uncovers as much as possible about the client and the marketplace. That method leads to recommendations that the client can most easily use, while still affording the best legal protection.
Mr. Gerstein has been selected as one of the "World’s Leading Patent Practitioners" in 2012 and as one of the "World’s Leading Intellectual Property Strategists" for several years by Intellectual Asset Management (IAM) magazine. Mr. Gerstein is listed in the Martindale-Hubbell® 2009 Bar Register of Preeminent Lawyers and was also awarded its AV Peer Review Rating™. In 2013, he was recognized as a "Top Rated Lawyer in Intellectual Property" by American Lawyer Media (ALM) and Martindale-Hubbell. He has been selected by the Chicago Law Bulletin’s Leading Lawyer Network as a "Leading Lawyer," was voted an Illinois Super Lawyer and was selected by his peers for inclusion in The Best Lawyers in America 2013.
He has been with Marshall, Gerstein & Borun since 1988 and has been a partner since 1995.
In 1988, Mr. Gerstein graduated from The University of Michigan Law School, cum laude, and received his B.S.E., with honors, in Nuclear Engineering from the College of Engineering at the University of Michigan in 1985.
- "USPTO Cuts Threaten To Hobble Already Stressed Agency," Law 360, May 16, 2013 (featured quotes).
- "Cover Story: Patents vs. Generics," First Business, April 3, 2013 (video interview).
- "Cover Story: Cyber Slueth," First Business, February 22, 2013 (video interview).
- "Cover Story: Apple vs. Samsung," First Business, July 31, 2012 (video interview).
- "In Hot Patent Market, New Rules Expected to Spur Swifter Filings," SmallBusinessExecutive, November 18, 2011 (featured quotes).
- "Hospira’s Plan For Generic Drug Draws Lawsuit From Abbott," Crain’s Chicago Business, October 4, 2011 (featured quotes).
- "New Patent Law Highlights The Need For Speed," CFO Magazine, October 1, 2011 (featured quotes).
- "Patent Patience," First Business, live video interview in nationally syndicated television program, September 21, 2011.
- "Patent Reform," First Business, live video interview in nationally syndicated television program, August 22, 2011.
- "IP Lawyers See New Patent Law as Major Shift," Chicago Daily Law Bulletin, September 13, 2011 (featured quotes).
- "Patent Overhaul," The Chicago Tribune, September 9, 2011 (featured quotes).
- “Financial Independence For The Patent Office,” IP Law 360, July 19, 2011.
- "Licensing Strategies for Success,” Panelist at Corporate Intellectual Property Conference 4th Annual Meeting, 2009.
- American Bar Association
- Chicago Bar Association
- Illinois State Bar Association
- Intellectual Property Law Association of Chicago
- American Bar Foundation
Clients have benefitted from Mr. Gerstein's representation in the following cases:
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
Short Biography
