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Jonathan Berschadsky

Partner

New York

767 Third Avenue, 23rd Floor

New York, NY 10017

jberschadsky@merchantgould.com

D: 212.223.7241

Contact My Assistant

Frannie Grasso

fgrasso@merchantgould.com

D: 212.223.7897

Practices

Electrical & Software IP Due Diligence Litigation Licensing Post Grant Proceedings

Industries

Electronics Automotive & Powersports Transportation Consumer Products Alternative Energy Manufacturing Medical Devices Semiconductors Telecommunications

Education

Rutgers University School of Law
J.D. 2000

Boston University
M.S. Electrical Engineering, 1993
B.S. Electrical Engineering, 1991

Bar and Court Admissions

Southern District of New York
Eastern District of New York
State of New York, 2001
State of New Jersey, 2000
U.S. Patent and Trademark Office

Professional Affiliations

NYIPLA Patent Law & Practice Committee
Co-Chair

Awards & Recognition

Recognized in the 2018 edition of IAM Strategy 300 – The World’s Leading IP Strategists

Recognized in the 2017 edition of IAM Strategy 300 – The World’s Leading IP Strategists

Winner of The Burton Awards 2016 Distinguished Legal Writing Award for co-authoring “Is PTAB ‘death squad’ just a myth?”

IP Star, Managing Intellectual Property, 2013-2018

Top Patent Prosecutors, Patent Buddy, 2011-2017

Top New York City Intellectual Property Litigator, Super Lawyers: New York Metro Edition, 2014-2018

Publications & Speaking

Speaking Engagements

“Section 101 - Three Years of Uncertainty”, Moderator, NYIPLA One-Day Patent CLE Seminar, Nov. 16 2017

Fundamentals of Patent Prosecution: A Boot Camp for Claim Drafting & Amendment Writing, Practicing Law Institute, 2010- 2018

PTAB Forum 2016, Managing Intellectual Property, May 12, 2016

The 11th Annual Patents for Financial Services Summit, World Congress, July 23-24, 2014

Patent Drafting Considerations in Light of Some Notable Court Interpretations of the Written Description Requirement, 16th Annual Advanced Patent Prosecution Workshop, July 2007

Publications

The Uncertain Future of Laches in Patent Litigation, IPWatchdog, co-written with Jason Dorsky, October 26, 2016

The Patent Trial and Appeal Board Designates Five Decisions as Precendential, Fitzpatrick Case Update, May 9, 2016

Is PTAB Death Squad just a myth?, Intellectual Property Magazine, June 2015

IP Due Diligence: key areas of analysis in biotech and pharma transactions, Financier Worldwide, September 2011

IP risk assessment in corporate M&A, Financier Worldwide, April 2010

Software and Patent Damages for Foreign Sales: Have the District Courts Gone Too Far?, The Computer & Internet Lawyer, July 2004

Current Developments in Business Method Patent Law, E-Commerce Law Journal, September 2001

Jonathan’s practice focuses on patent prosecution and litigation, freedom to operate analysis, U.S. and international strategic patent portfolio planning and management, as well as counseling clients on strategic partnerships and technology acquisitions. Having worked in the satellite communications industry on commercial spacecraft, the electronics industry on high-tech audio and electronics, and various Machine Learning applications of Artificial Intelligence qualifies Jonathan to work on all things "technologically complex." He can write about them for any audience: business folk, engineers, PTO examiners, judges and juries. When it comes to drafting patent applications, formulating arguments for high-stakes litigations, and rendering opinions on issues of patent infringement, validity and enforceability, Jonathan never leaves a stone unturned. He combines that with some serious agreement drafting and negotiating skills.

Jonathan is a regular CLE instructor for the Practicing Law Institute (PLI) and in-house counsel. Jonathan also moonlights as a mixed martial artist and on weekends goes mountain bike riding.

Representative Cases

Blue Spike, LLC v. Spotify USA Inc. et al. (CDCA). Patent infringement dispute involving steganographic ciphers and data scrambling.

Dicta-Direct, LLC v. Speech Processing Solutions USA Inc. (GAND). Patent infringement dispute involving speech to text conversion and language translation services.

IPC Systems, Inc. v. Cloud 9 Tech. (D. of Del.). Patent infringement dispute involving web-based trading turrets and their use in trading communication systems as well as misappropriation of trade secrets claims.

Cloud9 Tech. v. IPC Systems (PTAB). CBM and IPR contested proceedings involving specialized communication systems.

CG Tech. Development, LLC, et al. v. DraftKings, Inc. (D. Nev. & D. of Del.). Patent infringement dispute and related IPR contested proceedings involving online contests.

Canon adv. Intellectual Ventures (D. Del). Patent infringement dispute involving various aspects of printer, scanner, digital camera, and Wi-Fi technologies.

Sirona Dental Systems v. Danaher (D. Del). Patent infringement dispute involving CMOS-based digital dental imaging products.

All Media Guide adv. MOEAC (W.D. Wisc.). Patent infringement dispute involving software for managing digital music.

IBM adv. Sky Technologies. Claims of patent infringement, trade secret misappropriation, breach of contract, conversion and unjust enrichment relating to e-commerce software.

Donnelly Corporation v. Johnson Controls, Inc. et al. (W.D. Mich.). Patent infringement dispute involving automotive electrochromic rearview compass mirrors.