Overview

Alex Gelberg is an accomplished patent litigator and adviser who helps his clients protect their innovations in U.S. district and appellate courts across the country, the U.S. International Trade Commission, and the USPTO.

Known for the tech-savvy, detailed-oriented approach he brings to all his matters, as well for his ability to approach complex issues in a clear-headed, logical manner, Alex endeavors to provide strategic, thorough counsel that equips his clients to make informed decisions. His patent litigation experience spans a wide variety of technologies, including:

  • Cellular and satellite communications
  • Antenna design
  • Semiconductors and integrated circuitry
  • Computer architecture
  • Memory design
  • Computer networks
  • Backup and recovery software
  • Virtualization
  • Face recognition
  • Internet and e-commerce
  • Video and audio compression
  • Medical devices
  • Electro-chemical devices

Alex is considered a go-to adviser on the subject of standard-essential patents, or SEPs. Over the years, he has developed extensive knowledge of the 5G and legacy cellular standards, the 3GPP standardization process, as well as FRAND licensing strategies. His experience further covers emerging telecommunication standards, including the ETSI Network Function Virtualization and O-RAN Alliance.

As a complement to his litigation practice, Alex negotiates patent licenses, performs strategic patent portfolio analyses, and manages patent prosecution portfolios for his clients.

Alex’s extensive pro bono practice focuses on immigration and civil rights causes. He has argued multiple appeals before the U.S. Court of Appeals for the Ninth Circuit, and represented clients in the Southern District of California, the San Diego Superior Court, and the Board of Immigration Appeals.

Prior to joining Fish, Alex worked at Yahoo! as a member of the patent asset development group handling patent prosecution, a role which gave him valuable insight into the functioning of an in-house organization. Before entering the legal field, he was a principal engineer with DIRECTV, where he architected and developed software for satellite broadcast systems.

Outside of work, Alex can often be found shuttling his three children to sports practices and cheering them on at competitions.

Experience

Litigation

Represented a Fortune 10 client in a global patent dispute against Ericsson involving telecommunication technology. The two parties ultimately reached a licensing agreement following a year-long litigation battle.

Certain Lithium-Ion Battery Cells, Battery Modules, Battery Packs, Components Thereof, and Products Containing the Same; Inv. No. 337-TA-1181; Certain Pouch-Type Battery Cells, Battery Modules, and Battery Packs, Components Thereof, and Products Containing the Same, Inv. No. 337-TA-1179: Represented LG Chem and LG Energy Solution in a multi-patent infringement dispute against SKI Innovation before the International Trade Commission, involving cutting-edge lithium-ion battery technology that is essential for the future of the electric vehicle industry. The cases ended in a favorable settlement after trial.

Strategically involved in a multibillion-dollar, highly complex patent-related antitrust and commercial litigation for a Fortune 10 consumer electronics company involving cellular SEPs at the Southern District of California. The global, two-year battle eventually ended in a settlement at trial.

Represented a major network equipment manufacturer in a competitor patent infringement dispute before the International Trade Commission and Federal Circuit, and in the related post-grant proceedings before the U.S. Patent Trial and Appeal Board, involving networking technology and memory design. The matter ended with a favorable settlement following trial and resolution of post-grant petitions.

Represented a maker of medical devices in patent related investigation before the International Trade Commission, involving continuous positive airway pressure device technology. The case ended in a favorable settlement before trial.

Inventor Holdings LLC v. Microsoft Corporation D.Del. 1:14-cv-00720-GMS: Defended Microsoft in a patent infringement disputed against Inventor Holdings in the District of Delaware involving face recognition technology. The matter ended in a favorable settlement before trial.

Counseled a leading secure access equipment maker involved in a global patent dispute. The matter ended in a favorable settlement.

Represented a major backup software company in multi-district patent litigation involving data storage and recovery technology. The parties reached a settlement agreement before trial.

Defended major rental car companies in a patent infringement lawsuit filed in the Eastern District of Texas, and involving e-commerce technology. The matter ended in a favorable settlement before trial.

Defended a leading mobile phone maker in a patent infringement case involving internet-related technology. The matter ended in a favorable settlement before the trial.

Licensing

Represented a Fortune 10 client in licensing negotiations concerning audio and video compression patents.

Professional associations

  • Federal Bar Association, San Diego Chapter
  • San Diego County Bar Association
  • American Bar Association