Jeffrey Ginsberg has over twenty years of experience litigating patent infringement disputes and other intellectual property matters including false advertising, unfair competition, trademark infringement and trade secret misappropriation. Mr. Ginsberg has been involved in cases before numerous federal district courts, the International Trade Commission and the Patent Trial and Appeal Board (PTAB). He has had lead roles in bench and jury trials, and appellate proceedings. His technical experience covers an array of technologies including automotive parts, mechanical systems, manufacturing processes, electronics, telecommunications, medical devices, endodontic products, agrochemicals, pharmaceuticals, mass spectrometers, and polymeric materials. Additionally, he has substantial experience in patent prosecution, client counseling, opinion work, due diligence and licensing.
Mr. Ginsberg currently serves as an editor for the Intellectual Property Strategist reviewing and reporting on intellectual property decisions of significance.
- Defending endodontic equipment manufacturer against allegations of infringement of patents directed to methods of making nickel titanium endodontic instruments. (E.D. Tenn./PTAB). In separate inter partes (“IPR”) and post grant review (“PGR”) proceedings initiated after the district court action was filed, the PTAB found all challenged claims of two related patents unpatentable on multiple grounds. The Federal Circuit affirmed the IPR unpatentability decision. The Patent Owner withdrew its initial appeal of the PGR decision, resulting in a final judgment that all challenged claims of the second patent were also unpatentable.
Representing leading medical device manufacturer in assertion of a patent directed to an ultrasonic surgical device. (N.D. Ohio). Obtained favorable claim construction ruling. Case is proceeding toward trial.
Defending leading medical device manufacturer against allegations of infringement of six (6) patents directed to advanced bipolar electrosurgical devices. (D. Mass.).
Defended several dental supply companies against allegations of trade secret misappropriation in Tennessee state court. Obtained dismissal of all claims.
- Represented industry leader in the design and manufacture of screening equipment used in the mining, and oil and gas drilling industries with enforcement of patents on vibratory screening machines and replaceable screens that are used with the machines. Obtained highly favorable settlement after claim construction hearing. (W.D. La.).
Represented a leading global engineering and electronics company in connection with enforcement of patents covering braking systems. (E.D. Mich.). Obtained highly favorable settlement.
Represented a leading global engineering and electronics company in connection with enforcement of patents covering automotive parts against numerous parties in various district courts. Obtained jury verdict finding patents valid and infringed by one defendant, which was affirmed on appeal. (D. Del./Fed. Cir.). Obtained favorable settlements from numerous other defendants in more than 15 subsequent actions.
- Defended a home shopping network against allegations of infringement of patent directed to reverse auction in district court action and related CBM proceeding. Following hearing before the PTAB, all 39 claims of patent were found to be invalid. (E.D. Tenn./PTAB).
- Represented a broadband technology developer in connection with enforcement of patent concerning communications systems and methods for dynamically allocating data signaling channels. Case settled favorably on eve of trial. (E.D. Tex.).
- Defended an endodontic-equipment manufacturer against allegations of infringement of patents related to endodontic files in district court and ITC. (W.D. Pa./ITC). Case ended after favorable manufacturing/supply agreement was entered. In subsequent breach of contract action, jury awarded client $44 million in damages. (DNM).
- Defended pharmaceutical company against allegations of infringement of patents covering prenatal vitamins. Case settled favorably on eve of trial. (D. Del.).
- Represented a leading global medical technology company in a false advertising case concerning X-ray contrast agents. District court found in favor of client after trial on its false advertising counterclaim. (DNJ).
- Defended leading engineered materials company against allegations of infringement of patent on a measurement system for type of plywood. Obtained summary judgment of non-infringement. (W.D. La.).
- Represented a leading global engineering and electronics company in a patent infringement case before the ITC related to windshield wipers, which settled favorably after final hearing began. (ITC).
- Represented a major manufacturer of analytical instruments in connection with enforcement of patent related to triple quadrupole mass spectrometers. Obtained jury verdict of $47.5 million, the fourth-largest jury verdict in an intellectual property case that year. Verdict affirmed on appeal. (D. Del./Fed. Cir.).
- Represented manufacturer of dental products in declaratory judgement action concerning allegations of infringement of patent directed to making custom dental impression trays. Obtained summary judgment of non-infringement, which was affirmed on appeal. (E.D.N.Y./Fed. Cir.).
- Represented multinational consumer products company in connection with enforcement of patent directed to nicotine patches; case settled favorably on eve of trial. (S.D. Fla.).
- U.S. Supreme Court
- U.S. Patent and Trademark Office
- U.S. Court of Appeals, Federal Circuit
- U.S. District Court, Southern and Eastern Districts of New York; District of Colorado; District of New Jersey; Eastern District of Pennsylvania
- New York
- New Jersey
MEMBERSHIPS: American Bar Association; American Intellectual Property Law Association; New York Intellectual Property Law Association
- Co-Author, "Federal Circuit Holds PTAB Judges Unconstitutional, Constructs a Fix—But Not All Judges Agree on What Happens Next," Law Journal Newsletters (January 2020)