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Alexander E. Gasser

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lexander Gasser is a registered patent attorney with more than fifteen years of litigation experience who focuses on patent litigation in U.S. district courts and advising companies how to assert their rights and/or reduce their exposure to existing and potential intellectual property litigation. He has represented clients in patent infringement and adversarial licensing disputes involving pharmaceuticals (including Hatch-Waxman litigation), biotechnology, semiconductors, LCD technology, natural language processing, and consumer electronics.

Prior to joining Skiermont Derby LLP, Alex was a senior litigation associate at Oblon Spivak LLP, an internationally renowned litigation and patent prosecution boutique. He is experienced in all aspects of fact and expert discovery, motions, hearings, pre-trial, trial and appellate matters. His work has included coordinating the strategies of related litigations in the U.S., Japan, and Europe. Alex’s work included patent prosecution in the chemical arts and meeting with U.S. Patent Office examiners to advance the granting of patents. He has regularly prepared opinions and advised clients on mitigating risk through freedom-to-operate, invalidity, and non-infringement opinions. Alex also counsels clients on commercial transactions, including IP licensing, assignments, supply contracts, and due diligence with respect to purchases, mergers, and investments in companies.

Alex has advised clients on inter-partes review proceedings, which challenge the validity of issued patents before the U.S. Patent & Trademark Office. He has co-authored several chapters concerning IPRs in the treatise, “Post-Grant Proceedings Before the Patent Trial and Appeal Board,” published by Practicing Law Institute.

Alex has also worked on numerous patent interferences in the chemical and pharmaceutical fields, and related district court actions. Over the years, he has published more than 200 articles reporting on and analyzing trademark, copyright, trade secret, and patent litigation before the International Trade Commission on an ITC blog.

Alex lived in Switzerland, Germany and Belgium for 18 years and is fluent in German.


Representative Matters

Rockwell Automation, Inc. v. 3S-Smart Software Solutions GmbH (Eastern District of Texas)

Defend German developer of CODESYS software accused of infringing twenty-one Rockwell Automation patents. Rockwell expanded litigation to include multiple district court actions and International Trade Commission. Prepared and prosecuted common law and Sherman Act antitrust counterclaims against Rockwell Automation arising from its activities within various standards-setting organizations.

 

Laboratoire HRA Pharma v. Teva Pharmaceuticals USA, Inc. (District of Delaware)

Represented HRA Pharma, the branded pharmaceutical developer of ella®, in paragraph IV Hatch-Waxman patent litigation against ANDA applicant.

 

Andrulis Pharmaceuticals Corp. v. Celgene Corp. (District of Delaware)

Represented plaintiff pharmaceutical company in patent litigation pertaining to the use of thalidomide in combination with an alkylating agent to treat cancers such as multiple myeloma.

 

Rensselaer Polytechnic Institute, et al. v. Apple (Northern District of New York)

Trial counsel for patent owner Rensselaer Polytechnic Institute and exclusive licensee Dynamic Advances in a patent infringement lawsuit involving natural language processing. Apple’s Siri personal assistant is the accused instrumentality. Read the Law360 article (PDF) here and Cult of Mac: Siri lawsuit costs Apple $25 million.

 

Burroughs, Inc. v. Panini North America, Inc. (Eastern District of Michigan)

Defended Panini North America in patent infringement lawsuit related to document processing technology.

 

Panini S.P.A, et al. v. Burroughs, Inc. (Southern District of Ohio)

Represented plaintiff in patent infringement and commercial litigation related to document processing technology.

 

Anvik v. AFPD (Southern District of New York)

Defended Toshiba Corp. and its subsidiaries in an action concerning lithography methods used in conjunction with manufacturing liquid crystal display (LCD) panels.

 

Kyorin Pharmaceuticals, Allergan, Inc. et al. v. Apotex, Inc. (District of Delaware)

Counseled ophthalmic pharmaceutical patent owners Kyorin, Senju and their exclusive licensee Allergan against a generic manufacturer challenging the patent for one of the 10 most popular ophthalmic drugs on the market.

 

Toyota Motor Corp. v. Hyundai Motor Co. (Central District of California)

Counseled Toyota during licensing negotiations, and subsequently during Toyota’s first offensive litigation in the United States against accused infringer Hyundai, which resulted in a successful settlement against Hyundai.

 

Optrex America, Inc. v. Honeywell International, Inc. (District of Delaware)

Defended LCD manufacturer Optrex against a patentee that sued the entire LCD industry. The case resulted in settlement after lengthy litigation.

 

Osram GMBH and Osram Opto Semiconductor GMBH v. Citizen Electric Co., Ltd. (District of Delaware)

Helped coordinate and provided counsel for Citizen in a Light Emitting Diode (LED) patent matter that involved litigation and invalidation proceedings in Japan, Germany, and the United States.

 

Enzo Therapeutics, Inc. v. Yeda Research and Development Co., Ltd. (U.S. Patent & Trademark Office and Eastern District of Virginia)

Advised Yeda Research and Development and its licensee to overcome an interference proceeding initiated by Enzo, which matured into a hybrid appeal before a district court.

 

Bayer AG v. Norvartis Crop Protection, Inc. (U.S. Patent & Trademark Office)

Advised and represented Bayer during interference and prosecution proceedings to expand Bayer’s patent portfolio on heterocyclic insecticides.


Speaking Engagements, Presentations, and Publications

Co-authored several chapters in treatise, Post-Grant Proceedings Before the Patent Trial and Appeal Board, published by Practicing Law Institute in 2013, updated November 2014.

J. Derek Mason & Alexander E. Gasser, Developments in U.S. IP Law Affecting Licensing, presented at Licensing Executives Society Annual Conferences, Sept. 2010 and Oct. 2011.

Charles L. Gholz & Alexander E. Gasser, When, If Ever, Do Broadening Amendments Create Problems Under 35 USC 135(b)?, Intellectual Property Today, July 2010.

Charles L. Gholz & Alexander E. Gasser, What to Do if the Target Patent Has Expired, Intellectual Property Today, Dec. 2008.

Charles L. Gholz & Alexander E. Gasser, Zealously Representing a Client Versus Collegiality, Intellectual Property Today, Feb. 2007.

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