Overview

Jeffrey Gendzwill is a registered patent attorney who concentrates his practice on patent-related matters with a focus on client counseling, portfolio strategy and management, US and foreign patent preparation/prosecution, post grant proceedings and enforcement. Mr. Gendzwill’s practice spans a wide range of technologies with a focus on the chemical and life sciences industry including chemical engineering, chemistry, clean energy and nutritional/pharmaceutical supplements, as well as mechanical and biomechanical engineering, nanotechnology, physics, composite materials and medical devices. Mr. Gendzwill also has extensive experience preparing complex patentability, invalidity, non-infringement, and freedom-to-operate opinions, as well as state-of-the-art analyses.

Prior to joining the firm, Mr. Gendzwill was a shareholder in a Virginia IP boutique firm where his areas of practice included client counseling, portfolio management, opinions, licensing and patent preparation/prosecution. Before that, Mr. Gendzwill was an associate at both a Washington, D.C. office of a large Chicago-based firm and at a mid-sized firm in metro-Detroit, where he handled patent portfolios for automotive manufacturers and component suppliers. Prior to launching his legal career, Mr. Gendzwill worked in the automotive industry as a chemical engineer and as a technical sales engineer for several Fortune 500 companies including 3M Company and Henkel International.

Mr. Gendzwill is a frequent speaker on many IP law issues including post-Alice Corp. patent eligibility and joint infringement jurisprudence.

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Experience

Counsel for patentee Celanese in five inter partes review petitions filed by competitor Daicel challenging validity of Celanese patents related to industrial acetic acid production. The Patent Trial and Appeal Board initially ruled in favor of client Celanese, completely denying all five petitions, although requests for rehearing subsequently resulted in the institution of 3 of the 5 IPRs. In June of 2016, the PTAB issued final written decisions in the three IPRs, finding for patent owner Celanese and affirming all instituted claims as not unpatentable.

United States Patent and Trademark Office Patent Trial and Appeal Board, Case Numbers IPR2014-01514, IPR2014-01515, IPR2015-000170, IPR2015-00171 and IPR2015-00173.

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Education

University of Detroit Mercy School of Law, J.D. (2004) magna cum laude

University of Michigan, B.S., Chemical Engineering (1993)

Admissions

District of Columbia (2008)

Michigan (2005)

Court Admissions

U.S. Patent and Trademark Office (2004)

U.S. District Court for the Eastern District of Michigan (2014)

Professional & Community Activities

Kilpatrick Townsend & Stockton D.C. Veterans Initiative, Steering Committee, Member

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