C. GRAHAM GERST
PARTNER, "SUPER LAWYER"
Graham Gerst is recognized as a leading lawyer in the patent field at the national level. He has testified before Congress on patent issues, as well as spoken before the U.S. Federal Trade Commission and the U.S. Department of Justice on proposed government responses to activity by non-practicing entities. In 2013, IAM Magazine including him among the IAM 300 of the world's leading IP strategists. Also in 2013, Super Lawyers Magazine named Graham as one of the Top 100 Lawyers in the state of Illinois.
Graham works on all aspects of clients’ efforts to monetize their patents, including sales, licensing, and litigation. He is experienced with a wide array of technologies, including telecommunications, consumer electronics, digital imaging and color reproduction, data networking, optical data transmission, computer architecture, computer circuitry and semiconductors, packaging, biotechnology, and oil and gas.
One of Graham’s more notable recent achievements was the successful sale in 2012 of two patent portfolios on behalf of his client, Aware, Inc., for a combined $91 million. Aware's market capitalization immediately prior to the announcement of these transactions was just $77 million.
Immediately before joining Global IP, Graham served as Senior Counsel to the Deputy Attorney General at the U.S. Department of Justice. In that position, he vice-chaired the Justice Department’s Task Force on Intellectual Property and was appointed Deputy U.S. Coordinator for International Intellectual Property Enforcement. He also managed a portfolio of technology-related and national-security issues for the Deputy Attorney General, including computer forensics, information sharing, biometric data collection and management, and the Department’s participation in the Committee on Foreign Investment in the U.S. (CFIUS), the body that reviews foreign acquisitions of U.S. technology for national-security concerns. Graham held the U.S. government's highest level of security clearance. Finally, during his tenure, Graham was appointed Special Assistant U.S. Attorney in the District of Columbia and was lead counsel on multiple successful criminal jury trials.
Before that experience, Graham spent nine years in the Intellectual Property group at Kirkland & Ellis LLP, where he was a partner. He specialized in patent litigation, handling matters involving a wide array of technologies, including semiconductor design and manufacture, electronic circuitry, consumer electronics, the internet, biotechnology, oil and gas, automotive, kitchen appliances, and packaging. He has additional expertise in false-advertising and trademark law and is a member of the Trial Bar for the Northern District of Illinois.
Graham received a J.D., cum laude, from the University of Chicago law school, where he was an editor on the University of Chicago Law Review. After law school, he clerked for Judge E. Grady Jolly on the U.S. Court of Appeals for the Fifth Circuit. Graham received his B.A., with honors and cum laude, from Williams College.
Mr. Gerst’s legal activities outside of the office include serving on the Board of Governors of the Seventh Circuit Bar Association and on the Advisory Board of the Center for Intellectual Property Law & Information Technology at DePaul University Law School. He is a frequent speaker, both at conferences and in the press, on IP issues, and he also taught trial advocacy at the University of Chicago Law School. In his non-legal capacity, he serves on the Board of Directors of the Chicago Foundation for Education (former Chair) and is a member of the Economic Club of Chicago. He is a past Chair of the Metro Board of Metropolitan Family Services.
SPEAKING AND PRESS:
- 6 December 2013: Quoted in "IT Firms Squabble Over Patent Reform Bill," E-Commerce Times
- 3 October 2013: Quoted in "IOS threatened after court dismisses Apple's suit to protect developers," Mobile Marketer
- 6 August 2013: Quoted in "Some mobile patents lose bite as competitve weapon," Mobile Marketer
- 31 July 2013: Quoted in "Challenges of Defining a Patent Troll," Bloomgberg Law
- 28 June 2013: "Q&A with Global IP Law Group's Graham Gerst," Law360
- 14 June 2013: Quoted in "Patent Reform: Supporting or Stifling U.S. Innovation?," TheLaw.TV
- 12 June 2013: Quoted in "IT Companies Back Federal Plans to Battle Patent Trolls," E-Commerce Times
- 6 June 2013: Interviewed by Thomson Reuters in "Q&A: IP attorney Graham Gerst criticizes Obama proposals"
- 6 May 2013: Moderated panel on the smartphone patent wars at the annual meeting of the Seventh Circuit Bar Association
- 14 March 2013: Testified before the IP Subcommittee of the House Judiciary Committee at the hearing on "Abusive Patent Litigation: The Impact on American Innovation & Jobs, and Potential Solutions." The video of the hearing and the written submission are available at http://judiciary.house.gov/hearings/113th/hear_03142013_2.html. An article about the hearing is at http://thehill.com/blogs/hillicon-valley/technology/288333-overnight-tech-lawmakers-unsure-how-to-tackle-patent-trolls. A portion of his testimony was quoted in "House Panel Calls for Action on Patent Trolls," Law360
- 28 February 2013: Panelist on "Structure of a Proceeding and Constitutional and Other Constraints" of patent small claims court at a conference sponsored by the American Intellectual Property Law Association and the University of Illinois on "Patent Small Claims: The Next Big Idea."
- 1 January 2013: Selected by Super Lawyers Magazine as one of the top 100 Lawyers in Illinois
- 10 December 2012: Panelest at U.S. Federal Trade Commission/U.S. Department of Justice workshop on government responses to patent-assertion-entity activities. Graham's session can be found starting at minute 49 of the video on the FTC website at http://www.ftc.gov/video-library/index.php/ftc-events/patent-assertion-entity-activities-session-34/2028431452001
- 13 November 2012: Speaker on cell phone patent wars at JNK Securities patent seminar in New York, NY
- 13 November 2012: Quoted in "Is Apple showing a kinder, gentler side toward Android?," Mobile Marketer
- 16 October 2012: Speaker at Licensing Executives Society annual meeting in Toronto, Canada on panel titled "The Patent Wars Go Global: Multinational Litigations and their Effect on the Changing IP Landscape"
- 11 October 2012: Quoted in "Google's handling of mobile patents comes under scrutiny," Mobile Marketer
- 30 September 2012: Quoted in "Verizon will pay TiVo $250.4 million to settle patent infringement litigation," Business Insurance
- 21 September 2012: Article: "Aware Announces Closing of Sale of Selected Patents," The Boston Globe
- 6 September 2012: Graham Gerst speaks on monetizing intellectual property at the 2012 annual meeting of the National Association of Bankruptcy Trustees in Colorado Springs, Colorado
- 4 September 2012: Quoted in "Differing Apple rulings may cause issues," Chicago Daily Law Bulletin
- 29 August 2012: Quoted in "Apple ruling opens doors for Motorola," Chicago Sun-Times
- 23 August 2012: Article: "Aware Announces Sale of Selected Patents," Bloomberg Businessweek
- 22 August 2012: Editorial published: "Posner's approach in Apple causes some concern in patent world," Chicago Daily Law Bulletin
- 31 July 2012: Quoted in "Apple, Samsung take road less traveled," Chicago Daily Law Bulletin
- 29 June 2012: Quoted in "Apple gains ground on legal front with patent win, Samsung injuction," Mobile Marketer
- 26 June 2012: Quoted in "Does dismissal of Apple, Motorola suits have implications for other patent cases?," Mobile Marketer
- 24 March 2012: Speaker on "Offensive and Defensive Patent Portfolio Acquisition: Is Google Getting It Right?" at the American Bar Association's Spring Meeting in Las Vegas, NV
- 13 December 2011: Quoted in “Apple vs. Android,” National Law Journal
- 26 September 2011: Quoted in “It’s the Chips, Not the Cards,” Managing IP Magazine
- 8 September 2011: Speaker on “Patent Considerations in Technology Transfers” at International Symposium on Intellectual Property, Krakow, Poland
- 25 May, 2010: Speaker on “Managing IP Assets” at 2010 Corporate Intellectual Property Law Conference, Chicago, IL
- 8 August 2008: Speaker on “The U.S. Justice Department’s Role in Protecting Intellectual Property Rights,” at Conference on IP Law Enforcement Protection, Baltimore, MD
- 28 March 2008: Speaker on “Working with the U.S. Justice Department to Protect Your IP” at Technology and Innovation Conference, San Jose, CA
- 19 February 2008: Speaker on “The Advice-of-Counsel Defense” at 2008 Corporate Intellectual Property Law Conference, Chicago, IL
- 11 April 2007: Speaker on “Effective Use of Alternative Dispute Resolution to Achieve the Best Results for Your Client” at Law Bulleting Case Valuation Seminar, Chicago, IL
- 18 October 2006: Speaker on “Protecting Your Innovation Through Intellectual Property” at University of Chicago Graduate School of Business, Chicago, IL
- August 2006: Speaker on “Damage Control – How to Obtain and Limit Damages in Trademark and Advertising Cases” at the Kirkland & Ellis Advertising, Marketing & Promotions Law Seminar, Chicago, IL
- May 2005: Speaker on “Phillips v. AWH: The Federal Circuit’s En Banc Review of the Claim Construction Process” at the Kirkland & Ellis Technology & Law Seminar, Chicago, IL