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Aaron Frankel

Special Counsel

Phone: 212.715.7793 Fax: 212.715.8000 New York

Aaron Frankel is an intellectual property litigator. He has represented clients in complex patent, trademark and trade secret actions before a variety of courts and tribunals. Mr. Frankel frequently appears before the District of Delaware, the Eastern District of Texas, the Eastern District of Virginia, the Southern District of New York, and the Court of Appeals for the Federal Circuit.

In recent years, Mr. Frankel has represented clients in matters relating to semiconductor and LED devices, business method and software patents, consumer electronic devices, satellite radio and automobile systems. He also has considerable experience in litigating vendor indemnification claims arising from intellectual property disputes. He is an active member of the Model Patent Jury Instructions Subcommittee of the American Intellectual Property Law Association's Litigation Committee and of the New York Intellectual Property Law Association's Patent Litigation Committee.

Mr. Frankel brings his litigation experience to bear in prosecuting and defending reexamination and inter partes review proceedings, in advising clients on intellectual property licensing and transactional matters and in patent portfolio evaluation, acquisition and management projects.

Representative cases include: 

  • Prism v. AT&T; Prism v. Verizon; Prism v. Sprint; Prism v. U.S. Cellular; Prism v. T-Mobile (D. Neb.) — Representing Prism Technologies in patent infringement action involving access control for wireless networks.
  • World Jewish Congress v. World Jewish Congress Foundation (S.D.N.Y.) – Represented World Jewish Congress, a leading philanthropic organization addressing the interests and needs of the Jewish people and Jewish communities around the world, in a trademark and trade secret action.
  • Cooper Notification, Inc., v. Twitter, Inc. (D. Del.) - Representing plaintiff in a patent infringement action involving mass notification technology.
  • Pragmatus Telecom, LLC v. Sirius XM (D. Del.) – Obtained walk-away dismissal for Sirius XM of patent infringement claims relating to live chat customer service technology. Represented Sirius XM in third-party indemnification claim against vendor.
  • Elen IP v. WABCO et al. (W.D. Wash.) - Obtained walk-away dismissal of a global leader in commercial vehicle control systems and its customers in a patent infringement suit relating to vehicle anti-rollover systems. The non-practicing entity plaintiff agreed to the dismissal after we convinced the court to order a stay of general discovery and to limit discovery to the threshold issue of infringement.
  • Toyoda Gosei v. Formosa Epitaxy (N.D. Cal.) – Represented Toyoda Gosei in a patent enforcement action against a Taiwanese semiconductor manufacturer.
  • Patent Harbor, LLC v. Twentieth Century Fox Home Entertainment LLC (E.D. Tex.) - Represented third-party Deluxe Digital Studios, Inc., a leading company in the business of traditional and digital cinema services, in a lawsuit alleging patent infringement by a variety of film studios.
  • Klausner Technologies, Inc. v. Bright House Networks (E.D. Tex.) – Represented Bright House Networks, a cable service provider, in a patent infringement action relating to visual voicemail.
  • PACid Group v. Sirius XM (E.D. Tex.) Represented Sirius XM in a patent infringement action involving encryption technology.
  • Triangle Software, LLC v. Garmin Int'l, Inc. et al. (E.D. Va.) - Represented Volkswagen Group of America in a patent infringement action relating to vehicle navigation systems.
  • Bluestone Innovations LLC v. Toyoda Gosei (N.D. Cal.) - Obtained favorable resolution of a patent infringement action involving fabrication of light emitting diodes (LEDs) after successfully transferring case from the Eastern District of Texas to the Northern District of California.
  • Advance Magazine Publishers Inc. v. Activ8now (S.D.N.Y.) – Represented publishing giant Condé Nast in a litigation against a former website vendor asserting patent infringement, trade secret and trademark claims relating to the online versions of Vogue magazine. Obtained narrow claim construction leading to stipulation of non-infringement on all patent claims. Obtained summary judgment dismissal of all other causes of action asserted against Condé Nast.
  • Bendix Commercial Vehicle Sys. v. WABCO Automotive Control Sys. (N.D. Ohio) - Represented a global leader in commercial vehicle control systems against a patent infringement action brought by a major competitor involving air disk brakes.
  • August v. Camtek (Fed. Cir.) - Took over representing Camtek Ltd., an Israeli manufacturer of semiconductor wafer inspection systems, in a patent infringement action after an adverse jury verdict already had been entered. Won a decision at the Federal Circuit vacating the adverse judgment of the district court. 
  • Kaufman v. Sirius XM (S.D.N.Y.; 2d Cir.) - Obtained dismissal of breach of contract claim and narrowing of state statutory claim, then dismissal of Third Amended Complaint without prejudice for lack of diversity jurisdiction under Class Action Fairness Act. Defending dismissals before Second Circuit. 
  • Reliance Life Sciences Private Ltd. v. Fourteen22 Inc. (ICC) - Represented Fourteen22, pharmaceutical company, in an arbitration before the International Chamber of Commerce's International Court of Arbitration. Obtained dismissal of Moksha8 Pharmaceuticals Inc.
  • Sirius XM v. Alliacense (N. D. Cal.) — Represented Sirius XM Radio in a declaratory judgment action involving patents relating to microprocessor design and flash memory chips.
  • Personal Audio v. Apple, Sirius XM (E.D. Tex.) — Obtained dismissal of Sirius XM in patent infringement action involving audio content that can be downloaded and played according to a playlist.
  • Consumer Satellite Radio v. Sirius XM (E.D. Tex.) — Represented Sirius XM Radio, Best Buy, Honda, Radio Shack and Toyota in a patent infringement action involving interoperable satellite radio receivers.
  • Ronald A. Katz Tech. Licensing v. XM Satellite Radio (C.D. Cal.) — Represented XM Satellite Radio and Sirius XM Radio in a multi-district patent litigation involving computer telephony technology and in third-party indemnification claims against the vendors providing those services.
  • Berger v. Savient Pharmaceuticals (Ky. Cir. Ct.) — Won summary judgment for Savient Pharmaceuticals against a breach of contract claim regarding ownership of patents and multi-million dollar damages. 
  • Finisar v. Sirius Satellite Radio (E.D. Tex.) — Successfully defended Sirius Satellite Radio in a patent infringement action resulting in dismissal of all claims. 
  • Keystone Autonics, Inc. v. Sirius XM, (E.D. Tex.) — Obtained a decisively narrow claim construction order from the Eastern District of Texas, forcing the plaintiff to stipulate to dismissal of all of its claims. 
  • Praxair, Inc. v. ATMI, Inc., (Fed. Cir.) — Showed that a patent was unenforceable due to the inventors' inequitable conduct and successfully defended that finding before the Federal Circuit, leading to a favorable global settlement for our client. 
  • Midsummer Fin. Prods., Inc. v. Rapid Filing Servs. (N.Y. Sup. Ct.) — Vacated a crippling temporary restraining order based on alleged theft of trade secrets against a startup Internet-based tax preparation company during the middle of tax season, then obtained an award of costs and dismissal of all claims against our client. 
  • Purdue Pharma v. Endo (S.D.N.Y.) — Successfully defended pharmaceutical manufacturer Endo Pharmaceuticals in a complex ANDA patent infringement action, resulting in a win at trial and favorable post-trial settlement.

He was recognized as an IP Litigation Super Lawyer in the 2013 and 2014 editions of New York Super Lawyers and as a Rising Star in the 2011 and 2012 editions.

Mr. Frankel is the Deputy Chair of Kramer Levin’s Pro Bono Committee. For over ten years he served as co-coordinator of Kramer Levin’s award winning pro bono asylum program. He has served as lead attorney or supervisor for over two dozen teams successfully obtaining asylum for refugees fleeing persecution based on their ethnicity, gender, religion or sexual orientation. He was awarded the President’s Pro Bono Service Award by the New York State Bar Association (2008) and received a Safe Haven Award from Immigration Equality for his work on behalf of LGBT and HIV-positive asylees (2006). Mr. Frankel served on the Board of Directors of Immigration Equality for four years.

J.D., cum laude, Harvard Law School, 2001
  • Managing Editor, Harvard BlackLetter Law Journal
  • Team Leader, Harvard Defenders
B.S., Industrial Engineering, Class Salutatorian, Columbia University Fu Foundation School of Engineering and Applied Sciences, 1997
New York, 2002
U.S. Patent & Trademark Office, 2003
United States Court of Appeals for the Federal Circuit, 2005
United States Court of Appeals for the Second Circuit, 2011
United States Court of Appeals for the Tenth Circuit, 2013
United States District Court for the Southern District of New York, 2002
United States District Court for the Eastern District of New York, 2002
United States District Court for the Northern District of New York, 2005
United States District Court for the Western District of New York, 2005
United States District Court for the Eastern District of Texas, 2010
    -American Intellectual Property Law Association, Litigation Committee, Model Patent Jury Instructions Subcommittee 
    -New York Intellectual Property Law Association, Patent Litigation Committee