C. Graham Gerst Image

C. Graham Gerst

Partner

Global IP Law Group, LLC

Graham Gerst is a partner at Global IP Law Group, LLC. His experience encompasses complex transactions, litigation, and government (where he held the highest-level national security clearance). Many of the matters he has handled touch on technology in some way, such as patent, trade secret, data privacy, although he has also handled corporate investigations, auditing, breach-of-contract, tort, insurance, and false advertising. Graham has worked with a wide array of technologies, including SaaS, software, computer networking, optical transmission, semiconductors, telecommunications, automotive/vehicle navigation, biotechnology, medical devices, laser, payment networks, and Internet and IoT. His clients range from startups to global multinationals as well as a variety of financial (hedge and PE) firms.

Graham has been asked to testify before the U.S. Congress and speak at the U.S. Justice Department and the Federal Trade Commission on matters of legal policy involving technology companies. He has also served multiple times as an expert witness on matters involving IP and antitrust.

Graham has repeatedly been named one of the Top 100 Lawyers in Illinois and designated as a Super Lawyer. IAM Magazine has included him on its list of the world’s 300 leading IP strategists every year since 2012.

Recent Articles by C. Graham Gerst

Assessing PTAB Bias Via Analysis of ‘Dueling Expert’ IPRs

Patent owners think Inter Partes Reviews (IPRs) are a fixed game. Their concern goes beyond structural and procedural aspects of the IPR process; patent owners also believe that Patent Trial and Appeal Board (PTAB) judges are hostile to patents. Their concerns are particularly pronounced because their opportunities for appellate review of those PTAB judges’ decisions is limited. This article examines whether this concern is justified.

Section 101 on Trial: Understanding How Eligibility Issues Have Fared Before Juries

Few lawyers have tried patent eligibility, 35 U.S.C. Section 101, to a jury. Our research found just four such cases since the Supreme Court created its muddled two-step test in Alice v. CLS Bank. In every one of those, the jury issued a pro-ineligibility verdict, while none resulted in a final Section 101 determination either way. Understanding how that issue has been handled at and after trial is important for practitioners with cases where Section 101 is at issue, which has become increasingly common.

Lessons From a Quantitative Analysis of the Federal Circuit’s Section 101 Decisions Since Alice

Everyone agrees that the 2014 Alice v. CLS Bank decision dramatically changed courts’ approach to patent eligibility analyses under Section 101. Six years later, the Federal Circuit has issued enough opinions on the issue to allow for quantitative analysis to aid patent practitioners before that venue. We gathered our data set by reviewing every Federal Circuit decision addressing Section 101 since the Supreme Court’s Alice ruling. We tracked the judges’ individual Step 1 and Step 2 votes in each case and the ultimate panel decisions. We also recorded the opinions’ authors and the authors of any dissents, and which decisions were per curiam. Numerous cases involved independent analyses of different groups of claims. In those circumstances, we coded the votes on each claim or group separately. As a result, some cases ended up with multiple votes by a single judge being recorded on both Step 1 and Step 2.