Robert M. Gerstein, Partner

• An information technology development company’s largest customer decided it needed a formal agreement to cover the services provided. Most importantly, covering who would own and use the intellectual property related to what was developed. Marshall Gerstein negotiated a Master Services Agreement that kept the client’s biggest customer happy, ensuring that the intellectual property provisions allowed the client to maintain its other relationships and provided a platform for future growth.
• Robert has worked on several agreements for a company that uses biotechnology to engineer fermentation processes to produce pharmaceuticals and their ingredients. 
• When a large telecommunications company was sued by another large competitor, Marshall Gerstein helped develop an offensive strategy that went far beyond defending the lawsuit. We advised the client regarding third-party patents that could be asserted against the competitor, drafted and negotiated agreements with the third parties to acquire several patents, and asserted the patents against the competitor. That strategy led to a favorable settlement for the client without the need for time-consuming and expensive trials.

Robert has handled transactions and has given legal opinions for many technologies, including:

• Computers and software
• Pharmaceuticals and biotechnology
• Medical devices
• Vacuum cleaners
• Superconductors
• Video games
• Radio frequency filters
• Horticulture
• E-commerce
• Healthcare IT

Robert strives to get a deep understanding of each client’s business and technology, and integrate all aspects of IP with the organization’s business goals. The best solution for one client may not work for another due to their size, corporate cultures, product types and competitive landscape. Applying a concerted and analytical approach, he uncovers as much as possible about the client and the marketplace. That method leads to recommendations that the client can most easily use, while still affording the best legal protection.

In addition to his client counseling and work on transactions and licenses, he is involved in patent, trademark, copyright, unfair competition and contract arbitrations, mediations, and litigation. He has prepared numerous legal opinions for clients, primarily involving contract interpretation, patent validity, patent infringement or patentability. He also conducts due diligence for intellectual property transactions, as well as the intellectual property aspects of mergers, acquisitions and public offerings. Robert has also served as an expert witness on intellectual property transactions.

His experience includes patent and trademark prosecution. The patent prosecution work relates to U.S. foreign and international patent applications and has included reexaminations, inter partes reviews and appeals before the Board of Patent Appeals and Interferences.

He has been with Marshall Gerstein since 1988 and has been a partner since 1995. Robert served on the firm’s Executive Committee for more than a decade and currently serves as Chair of the firm’s Finance Committee and Chair of the firm’s Technology Committee.

In 1988, Robert graduated from The University of Michigan Law School, cum laude, and received his B.S.E., with honors, in nuclear engineering from the College of Engineering at the University of Michigan in 1985.

• University of Michigan Law School (J.D., cum laude)
• University of Michigan (B.S., with honors)
  • Nuclear Engineering

• Illinois
• U.S. District Court, Northern District of Illinois
• U.S. Patent and Trademark Office
• Admitted to practice pro hac vice in various district courts throughout the U.S.

See Robert's additional thought leadership.

• American Bar Association (ABA)
• Chicago Bar Association (CBA)
• Illinois State Bar Association (ISBA)
• Intellectual Property Law Association of Chicago (IPLAC)
• American Bar Foundation
• Executives' Club of Chicago

Clients have benefitted from Robert's representation in the following cases:

Ballard Medical Products v. Bissell Medical Products*
U.S. District Court, District of Utah
Case Type(s): Patent Infringement
Area(s) of practice: Mechanical Arts

Berfield* v. White Consolidated Industries
Case Type(s): Arbitration
Area(s) of practice: Intellectual Property Transactions

Carrot Top, Inc. v. KES Irrigation Systems, Inc.*
U.S. District Court, Northern District of Georgia
Case Type(s): Patent Infringement
Area(s) of practice: Mechanical Arts

Directed Electronics, Inc. v. Code Alarm, Inc.*
U.S. District Court, Southern District of California
Case Type(s): Patent Infringement
Area(s) of practice: Electrical Arts/Computer Software

Dynamic Graphics, Inc.* v. Goldmind Publishing
Illinois State Court
Case Type(s): Copyright Infringement
Area(s) of practice: Copyrights

*Party Represented

See Robert's additional Representative Matters.