Brian Paul Gearing is a partner in the Intellectual Property Practice Group of Kirkland’s New York office, focusing on patent litigation. He has experience in all stages of litigation, from pre-suit investigations through appeal in numerous jurisdictions, and before the ITC. Dr. Gearing has also advised clients on portfolio management and adversarial patent licensing negotiations, and has prepared invalidity and non-infringement opinions. He has unique experience working in Tokyo, Japan, where he spent three years representing Asia Pacific-based clients in U.S. litigations and arbitrations.
Dr. Gearing has been trial counsel on numerous high-profile litigations that have resulted in favorable judgments and settlements for his clients, and has successfully examined witnesses and argued motions in connection with those litigations. His clients have included Cisco, Apple, Intel, Samsung, Astellas Pharma, NTT DoCoMo, Softbank, Yeda Research & Development Co., Barnes & Noble, Wal-Mart, UPS, and Delta Air Lines.
Dr. Gearing has substantial experience with a wide variety of technologies, including materials science, mechanics and dynamics of materials, cancer therapy, semiconductor and hard disk design and manufacturing, microprocessor technology, wireless communications, and networking equipment and architecture. Dr. Gearing is an author of fifteen scientific publications and a named inventor on two U.S. patents pertaining to implantable medical devices and friction and wear of novel nano-coatings (U.S. Patent Nos. 7,251,893 and 8,241,698).
Before law school, Dr. Gearing earned a Doctorate of Philosophy from the Massachusetts Institute of Technology, where his research focused on the mechanics and dynamics of materials with an emphasis on fracture of polymers as well as mechanical testing at the micro- and nano-scales. During law school at U.C. Berkeley School of Law, Dr. Gearing was a member of the Berkeley Technology Law Journal and a fellow of the Berkeley Center for Law & Technology.
Represented Cisco Systems, Inc., including as trial counsel, before the ITC in an investigation involving Conversant Intellectual Property Management, Inc. f/k/a MOSAID Technologies, Inc. and the assertion of six U.S. patents in the context of Power-over-Ethernet technology. The litigation settled on the eve of the ITC hearing. Also represented Cisco against Conversant in a related proceeding in the District of Delaware. Cisco’s assertion of racketeering (RICO) claims against Conversant in connection with the district court litigation attracted national attention, including in the Wall Street Journal.
Represented, including as trial counsel, Cisco and other suppliers of Internet wireless routing products in a complex multi-district litigation concerning patents alleged to pertain to 802.11-standardized wireless technology. After a seven-day bench trial, determined that the plaintiff’s damages claim was limited to a RAND rate of less than 10 cents for each accused Wi-Fi product and also found that plaintiff’s demands for damages of more than a billion dollars “lacked a credible methodology” and that the plaintiff’s case suffered from a failure of proof. The case was hailed as highly favorable to technology companies and consumers and received worldwide media attention including in the IPLaw 360 articles “FRAND Rulings To Rein In Standard-Essential Patent Demands” and “Judge Sets Low Royalty Rate For Essential Wi-Fi Patents.”
Represented Cisco in an ITC investigation against ChriMar Systems, Inc. involving Power-over-Ethernet technology. Related proceedings are currently pending in the Northern District of California and Eastern District of Michigan.
Prior to joining Kirkland & Ellis, Dr. Gearing’s representative matters include:
Trial counsel for Israel-based Yeda Research & Development Co. Ltd. against ImClone Systems Inc. and Aventis Pharmaceuticals Inc. in a multi-billion dollar inventorship dispute in the Southern District of New York over a patent related to the Erbitux® (Cetuximab) cancer treatment drug. After a bench trial, received a total win, with the court ordering a complete replacement of the named inventors on the patent-at-issue. The trial received worldwide attention, including press in the United States and Israel. See Practical Lessons from a “Made for TV” Patent Litigation: The Trial of Yeda Research and Development Co. Ltd. v. ImClone Systems Inc. and Aventis Pharmaceuticals Inc. The Federal Lawyer, 55(2), 51-55 (2008) (Groombridge, N. and Gearing, B.). The litigation ultimately settled on confidential terms minutes before oral argument at the U.S. Court of Appeals for the Federal Circuit.
Trial counsel for Shanghai-based Advanced Micro-Fabrication Equipment, Inc. against Applied Materials, Inc. in the Northern District of California in a trade secret misappropriation action involving semiconductor processing tools for etch and CVD. The case settled shortly before trial on confidential terms.
Trial counsel for Intel Corp. against MicroUnity Systems Engineering, Inc. in the Eastern District of Texas in a patent litigation concerning microprocessor and memory controller architectures. The case settled shortly before trial.
Represented Tokyo-based Astellas Pharma Inc. in connection with a securities litigation before the Delaware Court of Chancery.
Represented Tokyo-based NTT DoCoMo and Softbank Corp. in a patent litigation involving wireless communications and SMS text messaging in the District of Maryland.
Represented Tokyo-based Elpida Memory in an international arbitration and mediation involving integrated circuit testing equipment.
Represented Tokyo-based Sumitomo Corp. in an international dispute regarding an alleged breach of contract regarding mining operations.
Represented Samsung in an ITC investigation involving wireless communications and encryption.
Represented Liechtenstein-based Unaxis in a patent litigation involving hard disk manufacturing tools in the Central District of California.
Represented defendant in a patent litigation involving DLP television technology in the Northern District of California.
Dr. Gearing has also represented clients on a pro bono basis in connection with:
an appellate hearing before the U.S. Social Security Administration;
an amicus curiae brief filed at the U.S. Court of Appeals for the Federal Circuit (see In re Pod-Ners, LLC (No. 2008-1492));
a Japanese immigration application and appeal for a citizen of the Philippines claiming political asylum; and
counseling of potential sex trafficking victims in connection with the Queens Sanctuary for Families’ Anti-Trafficking Project.
Memberships & Affiliations
New York Intellectual Property Law Association
New York State Bar Association
American Bar Association
Recipient, 2008 New York State Bar Association Empire State Counsel Award
Recipient, 2007 Legal Services for New York City Pro Bono Service Award
Practical Lessons from a "Made for TV" Patent Litigation: The Trial of Yeda Research and Development Co. Ltd. v. ImClone Systems Inc. and Aventis Pharmaceuticals Inc. The Federal Lawyer, 55(2), 51-55 (2008) (with Groombridge, N.).
Moseley v. V Secret Catalogue, Inc., Berkeley Technology Law Journal, 19, 221-42 (2004).
Representative Scientific Publications:
The Flexure-Based Microgap Rheometer (FMR). Journal of Rheology, 50(6), 883-905 (2006) (with Clasen, C. & McKinley, G.).
Wear Reduction of Orthopedic Bearing Surfaces Using Polyelectrolyte Multilayer Nanocoatings. Biomaterials, 27, 1527-33 (2006) (with Pavoor, P., Muratoglu, O., Cohen, R. & Bellare, A.).
Flexure-Based Micromechanical Testing Machines. Experimental Mechanics, 45, 412-19 (2005) (with Gudlavalleti, S. & Anand, L.).
Notch-sensitive Fracture of Polycarbonate. International Journal of Solids and Structures, 41, 827-45 (2004) (with Anand, L.).
On Modeling the Deformation and Fracture Response of Glassy Polymers Due to Shear-Yielding and Crazing. International Journal of Solids and Structures, 41, 3125-50 (2004) (with Anand, L.).
Tribological Characteristics of Polyelectrolyte Multilayers. Wear, 256, 1196-1207 (2004) (with Pavoor, P., Bellare, A. & Cohen, R.).
A Plasticity Model for Interface Friction: Application to Sheet Metal Forming. International Journal of Plasticity, 17, 237-71 (2001) (with Moon, H. & Anand, L.).
Weil, Gotshal & Manges LLP (New York), 2005-2008
Morrison & Foerster LLP (Tokyo), 2008-2010
United States Court of Appeals for the Federal Circuit
United States District Court for the Southern District of New York
United States District Court for the Eastern District of New York
United States District Court for the Northern District of California (pro hac vice)
United States District Court for the Central District of California (pro hac vice)
United States District Court for the District of Delaware (pro hac vice)
United States District Court for the Northern District of Illinois (pro hac vice)
United States District Court for the District of Maryland (pro hac vice)
United States District Court for the Eastern District of Texas (pro hac vice)
United States International Trade Commission