AREA OF PRACTICE

Intellectual Property Litigation; Trademark, Copyright, & Advertising; Intellectual Property; Technology

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Biography

Jason Sobel is a Partner in the Firm’s Intellectual Property Litigation and Technology Practice Groups. His practice spans a wide range of areas of intellectual property law, including litigation, transactions, prosecution, and other strategic matters. Jason provides intellectual property and litigation counsel to clients in a wide range of industries and technological disciplines, including financial service companies, software and internet companies, and manufacturers of mechanical and electrical devices, food products and ingredients, and consumer products.

Jason has litigated cases through trial and appeal in federal and state courts, and before the International Trade Commission. He has represented clients in claims of patent, copyright and trademark infringement, misappropriation of trade secrets, breach of contract, unfair competition, breach of restrictive covenant agreements, and fraud, as well as a variety of other technology disputes, torts, and commercial matters.

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

Jason 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.

Jason is ranked in Chambers USA for Intellectual Property: Trademark, Copyright & Trade Secrets in New York. The 2021 Guide states that Jason "displays the utmost professionalism and his counsel is well thought out and even-handed" and that "he simply does things smarter, faster and better than anyone else."

Awards

Representation

Jason has worked on the following 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. Law360 and The National Law Journal ranked the verdict as the largest trademark verdict and in the top 10 IP verdicts in 2014.

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.

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. – Represented Merck in patent infringement action relating to sunscreen technology. Case settled at the outset of trial.

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 of agreements providing access to trading platforms and other services.

*Some of the above matters were handled by Jason prior to joining Brown Rudnick.

Education

Fordham University School of Law – J.D., 2003
University of Pennsylvania – B.S.E., 2000

Bar Admissions

New York
U.S. Patent and Trademark Office
U.S. District Court for the Southern District of New York
U.S. District Court for the Eastern District of New York
U.S. Court of Appeals for the Third Circuit
U.S. Court of Appeals for the Ninth Circuit
Publications
Co-author, "Zest Labs v. Walmart: 115 Million Reasons to Take a Fresh Look at Trade Secret Assets," Food Industry Executive (July 22, 2021)
“Protecting the Confidentiality and Value of Sensitive Data and Intellectual Property,” Chapter 1, Best Practices for Data Protection and Privacy, Aspatore (2009)
“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)
Speaking Engagements
Guest Speaker, Fordham Law School, Intellectual Property for Entrepreneurs (2018-2021)
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
Awards and Honors
Chambers USA, Intellectual Property: Trademark, Copyright & Trade Secrets, 2021
The Legal 500 US, Trade Secrets (Litigation and Non-Contentious Matters), 2020
The Legal 500 US, Trademarks Litigation, 2020
Super Lawyers, Top Rated Intellectual Property Litigation Attorney in New York, NY, 2021, Rising Star, 2013-2018
City Bar Justice Center, Jeremy G. Epstein Award for Outstanding Pro Bono Service, 2009 (Inaugural)
Community Involvement
Brooklyn Law School’s Center for Urban Business Entrepreneurship (“CUBE”)