Overview
Jacob has litigated and tried numerous intellectual property actions in federal district courts throughout the country and litigated numerous inter partes review proceedings before the U.S. Patent and Trademark Office, Section 337 Investigations at the U.S. International Trade Commission, and appeals at the U.S. Court of Appeals for the Federal Circuit. Jacob also advises clients regarding protection and enforcement of their intellectual property. His clients comprise both emerging and Fortune 500 companies spanning various industries, including consumer electronics, automotive technologies, railroads, medical devices, financial technologies, cryptocurrencies, electrical fittings, roofing and building materials, heat tracing systems, pharmaceuticals, and Internet technologies.
Jacob joined the firm from the New York office of a large international firm, where he was a member of its nationally-recognized ITC practice.
Representative Experience
- Represented plaintiff CSI in an action for false advertising under the Lanham Act and other related state and federal causes of action against a competitor in the heat transfer industry related to steam heat tracing products. Controls Southeast, Inc. v. QMax Industries, Inc. and Thomas W. Perry, No. 21-cv-302 (W.D.N.C.).
- Represented plaintiff Celgard in a patent infringement and trade secret misappropriation action involving battery separator technology against a Chinese competitor in a wide-ranging, cross-border dispute. Celgard, LLC v. Shenzhen Senior Technology Material Co. Ltd. (US) Research Institute et al., No. 19-cv-05784 (N.D.C.A.).
- Represented BMW in three inter partes review proceedings challenging patents related to hybrid vehicle control technology that resulted in all challenged claims being invalidated. BMW of North America, LLC v. Paice LLC, IPR Nos. 2020-00994, 2020-01299, and 2020-01386 (P.T.A.B.).
- Defended Carta in a patent infringement and trade secret misappropriation action involving alleged inventions and trade secrets relating to a private capital management platform, in which the plaintiff sought billions of dollars in damages. Plaintiff settled after the district court struck more than half its patent case and in the face of summary judgment. AllRounds, Inc. v. eShares, Inc. d/b/a Carta, Inc., et al., Case No. 20-cv-07083-VC-DMR (N.D. Cal.).
- Defended DuPont in an ITC Section 337 Investigation related to synthetic roof underlayment products in which the Complainant was forced to withdraw its Complaint and to move to terminate the Investigation mere days after the ALJ issued a claim construction order fatal to Complainant’s case. Certain Synthetic Roofing Underlayment Products and Components Thereof, ITC Inv. No. 337-TA-1202 (U.S.I.T.C.). Also defended DuPont and FT Synthetics, Inc. in parallel district court litigation brought by the same plaintiff. Kirsch Research and Development, LLC v. DuPont de Nemours, Inc., Case No. 20-cv-00057-RWS (E.D. Tex.) and Kirsch Research and Development, LLC v. FT Synthetics, Inc., Case No. 20-cv-00058 (E.D. Tex.).
- Represented Invenergy, obtaining a preliminary injunction and temporary restraining order preventing the Government from reinstating a 25% tariff on imported solar panels. Invenergy Renewables LLC v. U.S. Office of the United States Trade Representative, U.S. Customs and Border Protection, No. 19-192 (U.S.C.I.T.).
- Represented plaintiff Siemens in a wide-ranging, multi-forum intellectual property dispute involving Positive Train Control technology, including a jury trial win resulting in a finding of willful infringement and a $15 million damages award, and defense of 15 inter partes review petitions before the U.S. Patent and Trademark Office. Siemens Mobility Inc. v. Westinghouse Air Brake Technologies, No. 16-cv-284 (D. Del.).
- Defended Breckenridge, through a bench trial, in a Hatch-Waxman patent infringement case concerning Breckenridge’s ANDA for a generic version of Kyprolis® (carfilzomib). Onyx Therapeutics, Inc. v. Breckenridge Pharmaceutical, Inc., Nos. 16-cv-1001, 18-cv-262, and 19-cv-71 (D. Del.).
- Defended Actavis, through a bench trial, in a Hatch-Waxman patent infringement cases concerning Actavis’s ANDA for a generic version of Minivelle® (estradiol transdermal system). Noven Pharmaceuticals, Inc. v. Actavis Laboratories UT, Inc., Nos. 15-cv-249, 16-cv-465, and 18-cv-758 (D. Del.).
- Defended Spark Networks in a hotly contested patent and trademark infringement action concerning a mobile dating application resulting in a favorable settlement and acquisition of defendant. Spark Networks USA, LLC v. Smooch Labs, Inc., No. 14-cv-9027 (S.D.N.Y.).
- Represented plaintiff Arlington, through a bench trial, in a district court contempt proceeding stemming from a prior patent infringement suit, resulting in a finding of contempt and an injunction against a direct competitor, and an award of lost profits and attorney fees for the patentee. Arlington Industries, Inc. v. Bridgeport Fittings, Inc., No. 2-cv-134 (M.D. Pa.).
- Defended Actavis, through a bench trial, in a Hatch-Waxman district court patent infringement suit related to a generic version of Embeda® (morphine sulfate and naltrexone hydrochloride), resulting in stipulation of dismissal after trial. Pfizer Inc. et al. v. Actavis Laboratories FL, Inc., No. 11-cv-914 (D. Del.).
- Defended General Motors in an ITC Section 337 Investigation related to automobiles with in-dash GPS navigation systems, resulting in termination of the Investigation by the complainant after six months of discovery. Certain Automotive GPS Navigation Systems, ITC Inv. No. 337-TA-814 (U.S.I.T.C.).
- Defended Handa and Par, through a bench trial, in a Hatch-Waxman district court patent infringement suit related to a generic version of Dexilant® (dexlansoprazole), resulting in a stipulated dismissal while appeal was pending. Takeda Pharmaceutical Co., Ltd. et al. v. Handa Pharmaceuticals, LLC and Par Pharmaceutical, Inc., No. 11-cv-840 (N.D. Cal.), and Par Pharmaceutical, Inc. and Handa Pharmaceuticals, LLC v. Takeda Pharmaceutical Co., Ltd. et al., No. 13-cv-1927 (N.D. Cal.).
- Defended Avaya in a patent infringement suit brought by a non-practicing entity against suppliers of network communication equipment compliant with the IEEE’s Power Over Ethernet standard. Network-1 Technologies v. Avaya et al., No. 11-cv-492 (E.D. Tex.).
- Represented plaintiff Arlington in a district court patent infringement suit, obtaining a preliminary injunction prohibiting a direct competitor from making, using, or selling electrical fittings accused of infringement, and subsequently obtaining a summary judgment finding of infringement. Arlington Industries, Inc. v. Bridgeport Fittings, Inc., No. 6-cv-1105 (M.D. Pa.).
- Represented Complainant Invacare in an ITC Section 337 Investigation related to adjustable-height hospital beds, resulting in a Consent Order excluding the accused products from entry into the United States. Certain Adjustable-Height Beds, ITC Inv. No. 337-TA-734 (U.S.I.T.C.).
Notable
Notable
- IAM Patent 1000: The World's Leading Patent Practitioners, 2024
- New York Metro Area Super Lawyers, "Rising Star," Intellectual Property, 2017-2022
- New York State Bar Association Empire State Counsel
News
News
Capabilities
Education
J.D., Brooklyn Law School
B.A., Boston College, Computer Science
Admissions
- North Carolina
- California
- New York
- U.S. Court of Appeals for the Federal Circuit
- U.S. District Courts for the Western and Middle Districts of North Carolina
- U.S. District Courts for the Northern and Central Districts of California
- U.S. District Court for the Southern District of New York