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Albert
Jacobs, Jr.
Partner
New York
Business Phone:
212.704.6086
Business Fax:
212.704.5903
albert.jacobs@troutmansanders.com
vCard
With more than 30 years of experience in patent law, Mr. Jacobs concentrates his practice in the areas of life sciences, especially pharmaceutical and biotechnology, medical, chemical and health care, as well as chemical, business method intellectual property law and litigation. He has extensive experience in obtaining original patents, as well as re-issue patents and those submitted for re-examination and has been responsible for obtaining patents on commercially valuable products and systems. The majority of Mr. Jacobs’ practice over the past 20 years has been in litigation involving patents infringed by third parties and defending clients charged with infringement by patent owners. He also counsels clients on issues of infringement and validity and global patent portfolio management.
In addition, Mr. Jacobs has extensive experience in intellectual property cases before the International Trade Commission. He has also successfully represented semiconductors and business method patent litigation, both at the trial level and at the Court of Appeals for the Federal Circuit (CAFC) and has successfully reversed several Markman rulings for his clients. He also has regularly lectured on and advised clients on the nature and enforcement of intellectual property rights in the People’s Republic of China as well as explaining U.S. IPR enforcement to the Chinese government and to Chinese companies and law firms.
Mr. Jacobs’ practice also includes technology transfer where he has been involved with a range of technologies from biotechnology, pharmaceutical and health care products to computer software and business methods, as well as due diligence and patent interferences. He has represented hundred of Patent applicants and Patent Interference parties before the Patent and Trademark Office Board of Patent Appeals and Interferences.
He has appeared before the CAFC almost from its inception representing both Patentees and alleged infringers. He is the only attorney ever to have the CAFC invalidate a patent on an appeal he took from a District Court grant of a Preliminary Injunction against his client. He has also enjoyed success for Patentees in having claim construction rulings of District Courts reversed.
Mr. Jacobs has also chaired the National IP Departments of two international general practice firms and one national firm and has also been the local Managing Partner of the New York office of three firms.
Among Mr. Jacobs’ significant representations, he has: obtained patents on several commercially important pharmaceutical and health care products; successfully defended a multi-national client against a charge of patent infringement before the ITC; on appeal before the CAFC he succeeded in having the court vacate a preliminary injunction and direct the district court to enter a judgment of non-infringement; in a later appeal involving a different patent he succeeded in having the CAFC not only vacate a preliminary injunction but hold a patent invalid for lack of enablement in an appeal from the grant of a preliminary injunction (the first and only time the CAFC has ever invalidated a patent or an appeal from a Preliminary Injunction); successfully represented the Patentee E-Data (Interactive Gift Express v. Compuserve, et. al.) before the CAFC in one of the first business method patent infringement cases to come before the court obtaining a reversal of the district court’s claim construction of five (5) key elements; obtained a temporary restraining order and then a preliminary injunction for a multi-national company in a patent infringement action in Delaware; successfully represented the defendant Conair in an electrical device infringement action before the CAFC which overturned the Patentee’s jury verdict based on arguments we presented in our post-trial motions; successfully represented the Patentee Lava Trading before the CAFC in a business method patent infringement case and obtained a reversal of the District Court’s construction of the key claim terminology; and obtained summary judgment of infringement and a Permanent Injunction for the patentee in Cybersettle against National Arbitration Forum.
More recently, Mr. Jacobs is representing Professor Gertrude Neumark Rothschild in two Section 337 ITC case involving semiconductors brought against 50 companies including LED, laser diode, electronics and cell phone companies, and was recently appointed counsel for the plaintiff in Gertrude Neumark Rothschild v. Cree, Inc. (a semiconductor patent infringement action in the SDNY).
He is author of Patent and Trademark Forms in Four Volumes, and co-authored Patent and Trademark Forms in Two Volumes, and has published several articles in legal publications including, “The PTO Redefines Genomic Ingenuity,” which appeared in the New York Law Journal, and "Will The US Soon Be Out-Innovated By China?" which was published by Law360.. He was a significant contributor to WIPO’s 2007 Patent Drafting Manual. He is a frequent lecturer, and was recently the keynote speaker at The Intellectual Property Leadership Conference: Top Partners on Winning Legal Strategies & Best Practices for Success. He was the only American invited to speak at the Fourth Annual IP forum in Shanghai, China, and in March of 2009, was the sole lecturer on the ITC at a conference in Shanghai, China sponsored by the Shanghai Intellectual Property Office (SIPO). He is scheduled to speak at a conference in Beijing in September on the ITC. He is frequently cited as an expert on patent law by the media, including appearances on FOX and CNN’s Business Asia.
Other Distinctions
Selected as a Super Lawyer in the Corporate Counsel Edition, July 2009
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Education
- Columbia University, J.D., 1964
Harlan Fiske Stone Scholar
- Harvard University, B.A., 1961
Bar Admissions
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New York
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U.S. Patent and Trademark Office
Court Admissions
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U.S. District Court for the Southern District of New York
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U.S. District Court for the Eastern District of New York
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U.S. District Court for the Northern District of New York
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U.S. District Court for the Western District of New York
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U.S. Court of Appeals for the Federal Circuit
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U.S. Court of Appeals for the District of Columbia Circuit
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United States Supreme Court
Memberships
- Appointed by Secretary of Commerce to serve as a member of the Patent Public Advisory Committee of the U.S. Patent and Trademark Office, 2002-2005
- Member, American Intellectual Property Law Association Far East Committee, Korean Sub-Committee
- Treasurer, International Bar Association IP and Entertainment Committee
- Co-Chair, American Bar Association Sub-Committee on Hatch/Waxman
- Member, New York Intellectual Property Association
- Member, International Association for the Protection of Industrial Property
- Member, Pharmaceutical Trademark Manufacturing Group
- Member, Licensing Executive Society
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