Jason M. Sobel is a Member of the Sills Cummis & Gross Intellectual Property Practice Group and Chair of its Trademark, Trade Secrets, and Copyright Practice. His practice spans a wide range of areas of intellectual property law, including litigation, transactions, prosecution, and other strategic matters. Mr. Sobel provides intellectual property and litigation counsel to clients in numerous industries and technological disciplines, including software and internet companies; manufacturing of mechanical and electrical devices and materials; financial services; chemicals; food products and ingredients; medical devices; life sciences; semi-conductors; and consumer products.

Mr. Sobel has litigated cases through trial and appeal in federal and state courts, and before the International Trade Commission. He has represented clients in claims of patent, trademark, trade dress and copyright infringement, misappropriation of trade secrets, breach of contract, unfair competition, breach of restrictive covenant agreements, and fraud, as well as a variety of other technology disputes, torts, and commercial matters.

Mr. Sobel has deep experience in contentious trade secret disputes, representing multiple clients in bet-the-business trade secret litigations and obtaining successful outcomes and allowing clients to maintain and increase their market positions.

Mr. Sobel regularly counsels clients in developing and maintaining their trademark portfolios, preparing strong assets to maximize corporate value. He obtained one of the largest sustained trademark infringement verdicts in history in a bet-the-brand litigation.

Mr. Sobel litigates patent matters for, and against, market leaders in a variety of industry sectors, obtaining sustained verdicts of patent infringement, and full defense dismissals. He is also a registered patent attorney and draws on his litigation experience to provide insightful strategy in caring for clients’ existing and developing patent portfolios.

Mr. Sobel’s experience in intellectual property and technology sectors positions him as a trusted advisor to companies at all stages of the corporate life cycle, seeing companies through developing and protecting their intellectual property portfolios, defending against high-stakes lawsuits, and successful mergers. He has structured, prepared, and negotiated intellectual property, technology, service, and supply agreements in connection with stand-alone and large corporate transactions. Mr. Sobel has performed intellectual property and information technology due diligence and provided related advice in the context of corporate transactions and internal company audits of intellectual property. Additionally, he has experience implementing employee intellectual property ownership and information systems, policies, and advising clients on a host of legal issues touching on computer software and technology.

Mr. Sobel’s pro bono work includes counseling community based microentrepreneurs in a legal clinical setting. He also regularly guest lectures on intellectual property for startup and entrepreneur law classes at Fordham Law School and Miami Law School.

Prior to joining Sills Cummis & Gross, Mr. Sobel was a partner in the New York office of two Am Law 200 law firms.

Practices

  • Intellectual Property
  • Intellectual Property Litigation
  • International | U.S. Cross-Border

Expand All

Representative Matters

  • The following matters include work handled prior to joining Sills Cummis.

    • PODS Enterprises v. U-Haul. PODS in a trademark infringement action relating to portable moving and storage containers. Trial counsel in a two-week jury trial resulting in a verdict of more than $60 million for the client, finding for the client on all counts. Law360 and The National Law Journal ranked the verdict as the largest trademark verdict of the year.
    • XpertUniverse v. Cisco Systems. XpertUniverse in a patent infringement and fraud case. Trial counsel in a two-week jury trial resulting in a verdict of more than $70 million for the client, finding the patents were valid and infringed and that Cisco had committed fraud. The court sustained the jury verdict regarding the patent claims but overturned the fraud claim. The National Law Journal ranked the $70 million jury verdict in the top five IP verdicts of the year.
    • Kewazinga v. Google. Kewazinga, a developer of telepresence technology, in a patent infringement litigation against Google over Google’s Street View product. Case settled during trial.
    • Michelin v. Maxam Tire. Maxam Tire in design patent and trade dress infringement action relating to specialty tires for the mining industry. Following successful obtaining dismissal of a portion of Michelin’s case, and successfully securing a Markman hearing, a rarity in a design case, the parties resolved the matter on confidential terms.
    • ADP v. Ultimate Software Group (now UKG) and related cases. UKG in defending against claims of misappropriation of trade secrets and corporate raiding. This highly complex case had more than 20 related suits brought by ADP against individual employees of UKG that ran in parallel before the trial and appellate level of both state and federal courts. After five years of contentious litigation, the dispute was resolved on confidential terms.
    • MasterTax v. Ultimate Software Group(now UKG). UKG in a trade secret litigation and software license dispute. Obtained reversal of district court’s preliminary injunction on interlocutory appeal before the Ninth Circuit. Case was later resolved on confidential terms.
    • Thomas & Betts. v. Richards Manufacturing. Richards Manufacturing in a theft of trade secret and breach of duty of loyalty case relating to rubber injection molding processes for high voltage underground electrical connectors. Trial counsel in five-week jury trial that resulted in favorable verdict after nine years of litigation.
    • WTI v. Richard Hull, Isoage Technologies. Six defendants and counterclaim plaintiffs in complex bet-the-business competitor litigation, including dueling claims of misappropriation of trade secrets; breach of license agreement; breach of employment and restrictive covenants agreements; and other torts. Client entity increased their market share throughout six-year litigation. Case settled shortly before trial.
    • Altvater Gessler – J.A. Baczewski v. Sobieski Destylarnia. Sobieski in trademark infringement and trade secret misappropriation action relating to distilled spirits. Jury rendered verdict in favor of Sobieski on all matters.
    • Honeywell v. Nikon, FUJIFILM and FUJIFILM U.S.A. Fuji in patent infringement action, obtaining summary judgment of patent invalidity on patent related to liquid crystal displays. Affirmed after appeal.
    • L’Oréal S.A. and L’Oréal USA, v. Merck and Co., Merck Sharp & Dohme and MSD Consumer Care.Merck in a patent infringement action relating to sunscreen technology. Case settled immediately prior to trial.
    • Neurografix v. Cornell University; New York Presbyterian Healthcare Systems and Weill Cornell Imaging at New York Presbyterian.Defendants in patent infringement action relating to MRI technology. Obtained full dismissal prior to first multi-district litigation deadline.
    • Thomas Publishing Company v. Technology Evaluations Centers. Technology Evaluations Centers in copyright infringement action concerning competitor’s database. Case settled before trial.
    • NNG Kft v. Sound Around et al. Defendants against claims of copyright infringement, trademark infringement and circumvention in violation of the Digital Millennium Copyright Act. Case settled during discovery.
    • Fuji Photo Film in a campaign to enforce a group of pioneering patents for single-use cameras in federal trial and administrative courts (including the ITC and CIT) and through U.S. Customs. Client obtained ITC general exclusion order, followed by several administrative decisions and verdicts in its favor.
    • Digital Angel v. Datamars. Digital Angel in a patent infringement action on a patent relating to passive Radio Frequency Identification (RFID) technology for companion animal tracking. Case settled before trial.
    • FUJIFILM Medical Systems in its acquisition of Empiric System, providers of medical imaging and information systems.
    • Nomura Holding America and Nomura Securities International in agreements providing access to trading platforms and other services.

Court Admissions

  • U.S. Patent and Trademark Office
  • U.S. District Court, Southern District of New York

Newsroom

Presentations

Rankings and Recognition

  • Selected for inclusion in:
  • Chambers USA: America’s Leading Lawyers for Business®* 2021-2025, New York Intellectual Property: Trademark, Copyright & Trade Secrets
  • IAM Patent 1000* Recommended Individual, 2022-2025, Litigation
  • Managing Intellectual Property* IP Stars, 2022-2025, Patent and Trademark
  • The Legal 500 US®* 2020, 2022-2025, IP Trade Secrets (Litigation and Non-Contentious Matters); 2020, Trademarks Litigation
  • New York Metro Super Lawyers®* 2021-2025, Intellectual Property Litigation, Intellectual Property, Technology Transactions; “Rising Stars” 2013-2018, Intellectual Property Litigation, Intellectual Property, Technology Transactions
  • Received the inaugural Jeremy G. Epstein Award for Outstanding Pro Bono Service from the City Bar Justice Center in 2009.

* See Award Methodology. No aspect of this advertisement has been approved by the Supreme Court of New Jersey.


Education

  • J.D., Fordham University School of Law
  • B.S.E., University of Pennsylvania

Bar Admissions

  • New York