Gary A. Abelev

Gary represents domestic and foreign clients in patent litigation, proceedings before governmental agencies, due-diligence studies, worldwide patent portfolio management and procurement, negotiations, and licensing matters.

Gary’s litigation experience spans the US and abroad, and his proceedings before governmental agencies include both contentious and non-contentious proceedings in the US Patent and Trademark Office (USPTO), Patent Trial and Appeal Board (PTAB), and US International Trade Commission (ITC), among others. He focuses the majority of his practice on the following technical subject matter: medical imaging, analysis and therapy technologies, computer software and hardware, artificial intelligence (AI) and modeling, imaging technologies, semiconductor manufacturing, wired and wireless communications systems, material science and metallurgy, hardwired systems, circuit designs, electrical and mechanical automotive technologies, and business methods and designs.

Litigation

• ironSource, Ltd. v. Digital Turbine, Inc., PGR2021-00096. Represented the petitioner in a post-grant review before the PTAB in which the PTAB agreed with the petitioner and found all claims of the patent owner’s patent are invalid, and that proposed substitute claims are also invalid.
• Keldar v. Baby Brezza Enterprises, LLC, 14-cv-904 (E.D. Tex.). Represented defendant against allegations of patent infringement directed to products for making infant formula. Case was settled favorably following the Markman hearing and initial claim construction.
• Vitro Packaging, LLC v. Saverglass, Inc., IPR2015-00947. Defended patent owner in an IPR proceeding. In view of the patent owner’s preliminary statement, the PTAB denied institution of inter partes review against our client’s design patent.
• Saverglass, Inc. v. Vitro Packaging, LLC. Represented plaintiff in a design patent litigation involving the ornamental design of a bottle.
• The Trustees of Columbia University in the City of New York v. HiSense USA, 14-cv-4547 (S.D.N.Y.). Represented plaintiff in a breach of contract action in connection with the sale of patents. Settled on favorable terms.
• Kiss Nail Products, Inc. v. Pacific World Corporation (E.D.N.Y.). Represented plaintiff alleging false advertisement and other counts by defendant.

• SPH America v. Acer, et al. (E.D. Va.). Represented defendants, Casio America, Inc. and Casio Corporation of America, against allegations of infringement of five patents alleged to cover various aspects of CDMA technology employed in cellular telephones and other wireless devices.
• SPH America, LLC v. Apple, et al. (E.D. Va). Represented defendants, Casio America, Inc. and Casio Corporation of America, against allegations of infringement of two patents alleged to cover various features of cellular telephones.
• Saverglass v. Tommy Bahama (S.D.N.Y.). Represented plaintiff in an action involving design patent infringement and unfair competition.
• Garber v. Chicago Mercantile Exchange (N.D. Ill.). Represented defendant accused of infringing patent on system for electronic trading. Plaintiff's complaint was dismissed with prejudice prior to claim construction hearing.

Due Diligence and M&A Experience

• Part of a team representing a technology company in its sale to another entity. Led a team of intellectual property professionals in negotiating with the buyer’s counsel the representations and warranties of the asset purchase agreement and other agreements.
• Represented a publicly-held power distribution company in its purchase of a technology company developing and providing a power control system. Led a team of intellectual property professionals in reviewing the intellectual property assets of the target company and negotiated with the seller’s counsel the representations and warranties of the asset purchase agreement and other agreements.
• Represented a mobile device application provider of a foreign mobile device application developer. Led a team of intellectual property professionals in reviewing the intellectual property assets of the target company and negotiated with the seller’s counsel the representations and warranties of the asset purchase agreement and other agreements.

• Recognized as a Patent Star in the IP STARS Handbook (2024), Managing Intellectual Property
• Ranked Bronze for Patent Litigation (2021-2024) and Recommended for Patent Prosecution (2022-2024) in New York in the IAM Patent 1000, Intellectual Asset Management
• Ranked among IAM Strategy 300 Global Leaders (2024), Intellectual Asset Management
• Recognized as one of “The World’s Leading IP Strategists” (2022-2024), IAM Strategy 300
• Recommended for Patents: Licensing (2017-2018, 2020-2021), Patent: Litigation (Full Coverage) (2017), and Patent: Prosecution (2017), Legal 500 United States
• Recognized as a Super Lawyer for Intellectual Property (2016-2020, 2022-2024), The New York Times Magazine / New York Super Lawyers

• Faculty Member, Practising Law Institute, Principles of Patent Prosecution
• Member, American Bar Association, Intellectual Property Section
• Member, New York Intellectual Property Association