C. Gregory Gramenopoulos

Partner

Gregory Gramenopoulos has more than 15 years of experience in the field of intellectual property law. He handles patent matters for emerging and high-technology companies in various electrical sciences, including computer hardware/architecture, software, communication networks, and digital signal processing and control systems. A significant portion of his current practice is devoted to strategic counseling on patent procurement and pre-litigation activities, opinion preparation on issues relating to infringement and validity, and patent infringement litigation.

Mr. Gramenopoulos counsels both domestic and foreign clients, but has a significant base of European clientele gained in part through his tenure in the firm’s European office in Brussels from 2000 through 2004. Through his knowledge of both U.S. and foreign patent systems, he applies a unique global perspective to advise clients on worldwide filing and licensing strategies. Mr. Gramenopoulos has also successfully represented clients in U.S. district court and multi-national patent infringement suits.

During the course of his career, Mr. Gramenopoulos has overseen the drafting and prosecution of hundreds of patent applications, and assisted clients with strategically building and managing their portfolios. He has also assisted clients with extracting value from their portfolios through licensing and other strategies.

A frequent lecturer on U.S. intellectual property law, Mr. Gramenopoulos has spoken before numerous Fortune 500 companies and organizations in the United States, as well as various multi-national companies and law firms throughout the world.

Highlights

• Assisted AOL in achieving a $1.056 billion patent deal with Microsoft, acting as lead IP advisor with respect to strategic planning, negotiations, and closing; the deal involved the sale of 800+ patents and a portfolio license.  Led the Finnegan prosecution team that worked closely with AOL to strategically build and strengthen its patent portfolio towards its monetization goals.
• Represented a major semiconductor manufacturer in a multi-national, patent infringement suit. Achieved a favorable settlement for the client by strategic use of nullity proceedings in Germany to invalidate one of the asserted patents.
• Defended Axis Communications Inc. in a multi-district litigation involving JPEG technology and patent assertions by Compression Labs. Obtained a favorable settlement for the client.
• Led the defense of Swiss Post in a global dispute involving claims of patent infringement related to email authentication technology.  Coordinated legal strategies in the United States and Switzerland, including a reexamination proceeding before the U.S. Patent and Trademark Office that rejected all 89 claims of the asserted patent.  A global settlement was achieved following dismissal of the opposing party’s Swiss action and the submission of summary judgment motions in the district court of California.
• Provided strategic counseling to major software and consumer electronics companies for licensing negotiations with IBM, Texas Instruments, and other high-technology companies. Obtained favorable license agreements, after assisting each client with analyzing patents and developing positions for negotiations.
• Represented Moody’s in a trade secret violation and breach of contract dispute related to its loan pricing software.  Led the Finnegan team that navigated Moody’s through a series of negotiations, resulting in a successful settlement and capitulation by the opposing party on all terms demanded by Moody’s.
• Worked as an intelligence analyst for the Office of Scientific Weapons Research (OSWR) at the Central Intelligence Agency (CIA). Authored numerous intelligence reports on complex radar and communications systems, including reports featured in the Presidential Daily Brief (PDB).

Professional Activities

• American Bar Association
• Federal Circuit Bar Association
• Licensing Executives Society
• American Intellectual Property Law Association
• Federation Internationale des Conseils en Propriete Industrielle (FICPI) U.S. Section
• Eta Kappa Nu
  

Select Publications

• "The America Invents Act: New Challenges and Opportunities for Patent Applicants and Litigants," Intellectuele Rechten Droits Intellectuels, 2012.
• Coauthor. "Divine Intervention: Intervening Rights Based on Post-Grant Examination, Before and After the Leahy-Smith America Invents Act (AIA)," CIPA Journal, June 2012.
• Coauthor. "The Extraterritorial Reach of U.S. Patents: Implications for the Global Marketplace," a version of this article was originally published in the third issue in series of reports published by BNA International as part of the IP & Technology Programme, May 2006.
• Coauthor. "Festo: The Tip of the Iceberg," LES Benelux Newsletter, Dec. 2002.
• Coauthor. "The Doctrine of Equivalents After The Hilton Davis Case," Patent, Japan Patent Attorneys Association, Nov. 1996.