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Protecting Intellectual Property

 Jeffrey Feldman and James Gale

Protecting a new invention, trademark or creative work requires an experienced intellectual property (IP) law firm, according to James A. Gale, co-founder of Miami-based Feldman Gale. “We understand the importance of enforcing our clients’ IP rights and have built a nationwide practice in this unique sector of the law.”

A Registered Patent Attorney who focuses his legal practice on IP counseling and litigation, Gale was one of the first board-certified intellectual property specialists in Florida. His partner and firm co-founder Jeffrey Feldman is an experienced litigator who has “first-chaired” patent, trade secret, trademark, copyright, false advertising, and unfair competition cases around the nation.

“Jeff enjoys complex IP litigation, and is comfortable appearing as trial counsel late in a case,” Gale says. “Since 98 percent of patent cases settle, Jeff is one of the few IP attorneys who has actually tried a number of patent cases to verdict.”

Today, Feldman Gale has a team of more than 20 attorneys, many of whom have science, engineering and technology backgrounds. With offices in Tampa, Philadelphia and Los Angeles, the firm represents manufacturers, distributors, service companies, technology companies, individual investors and universities in virtually all industry sectors, and in all aspects of intellectual property law, including procurement, licensing, mediation, arbitration, trial and appeals.

“Our firm includes registered patent lawyers and seasoned trial attorneys — and that makes a big difference,” says Feldman. “When necessary, we create teams of people who bring different skill sets together, fielding an IP team that can go head-to-head with the largest firms.”
While having savvy IP attorneys is crucial to the firm’s success, Gale adds that the team focuses on giving clients good value for professional service as well as personalized attention, , including being on call 24/7 if necessary. “Our goal is not to get bigger and open a lot of new offices,” says Gale. “Many firms have gotten into trouble by growing just for the sake of growth. We already have excellent bench strength if a case requires more people. Our objective is to be the best in our field.”

Launching the Firm

Feldman and Gale practiced separately in South Florida for many years before teaming up to form their firm on April 1, 1995. “Jeff and I go back to law school at the University of Florida in the 1970s,” recalls Gale. “He was two years ahead of me, and when I saw him as a student juror in a mock trial, I said to myself, ‘That’s who I’d like to be someday.’ Over the years, our careers took different paths, but I would constantly read about Jeff’s accomplishments in the courtroom.”

After earning his law degree, Gale worked at Broad & Cassel, Morgan Lewis & Bockius and McDermott, Will & Emery building his IP practice. Meanwhile, Feldman became an assistant state attorney and assistant U.S. attorney. As a federal prosecutor, he conducted federal grand jury investigations involving wire and mail fraud, racketeering and neutrality violations. He also investigated aspects of the Iran-Contra case during the Reagan presidency. During that time, he indicted and singularly tried many of his cases to jury verdict.

Feldman entered private practice in 1988 and was a shareholder at Fine, Jacobson, Schwartz, Nash & Block and a partner at McDermott, Will & Emery, where he assisted Gale in a patent litigation case. “Jim asked me to assist with the trial work,” Feldman says. “I had not done work on patent cases before then, but I did my homework and was able to try and settle the case on favorable terms for our client.”

To celebrate the outcome, the two attorneys met for drinks at a Miami Lakes restaurant and decided to launch their own firm. “Through the years, about 80 percent of our work has involved intellectual property,” says Gale. “We also have a thriving commercial litigation practice, since Jeff and others in the firm can try any type of case.”

Another aspect of the firm’s practice involves drafting and litigating non-compete and confidentiality provisions in employment contracts. “The inter-relationships of various state laws can have a significant bearing on the outcome,” says Gale, who advises clients on these clauses. “For example, California’s statute expressly prohibits covenants not to compete, while Minnesota is one of the most pro-enforcement states in the nation. In these matters, choice of forum can make a huge difference in the outcome.”

Gale notes that once the firm’s attorneys have learned the ins and outs of a client’s IP case — particularly matters involving sophisticated technology — it makes economic sense for the client to use Feldman Gale for similar litigation matters around the country. “Because of the learning curve, we get a lot of work from both plaintiffs and defendants,” Feldman says. “It’s not uncommon for us to handle a series of patent cases for the same client.”

To date, the two partners have handled IP cases in more than 40 states. Feldman adds that the firm is seeing an increase in plaintiff patent filings in Florida courts, particularly in the Southern and Middle Districts, as the state’s federal judges acquire expertise in this field.

“What really distinguishes our firm is the depth of our patent and trademark practices,” Feldman says. “We handle everything from prosecution to clearance to litigation and licensing,” he says. “Knowing the filing and registration processes also gives our team a head start when IP disputes arise.”

Leading the Way

Both Gale and Feldman have been leaders in advancing the knowledge of IP issues in legal circles. A longtime advocate for board certification, Gale became the first chairperson of The Florida Bar’s Board Certification Committee in 2007. In February, Feldman is scheduled to speak at The Florida Bar’s International Litigation and Arbitration Conference on “Developments in International Intellectual Property Litigation.”

In the community, Gale has served on the board of directors of HANDY Inc. (Helping Abused And Neglected Youth), and was active in the American Red Cross, Jewish Federation of Greater Miami and the Italian American Club. Feldman is active with several South Florida music and art organizations, and is a trustee of the Musical Arts Association of Miami, which supports The Cleveland Orchestra’s winter residency in Miami. Both Gale and Feldman are members of the Board of Trustees of the University of Florida Law School.

Professionally, Feldman frequently lectures on IP topics. He will be speaking at the Dade County Bar symposiums on the America Invents Act, and has been invited to speak at the U.S. Patent Office in January. “IP is a fascinating area of practice that is always evolving,” he says. “For instance, some of the patent challenges that would typically be filed in district court may be shifting to administrative proceedings. But whatever the future holds, Feldman Gale will be there to assist our clients.”

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