AREAS OF EXPERTISE

DIVERSITY OF EXPERIENCE BRINGS BROAD EXPERTISE

Gardella Grace is unique among small patent firms in its professionals’ extraordinary breadth of experience. Gardella Grace’s professionals have prevailed in numerous district court litigations and U.S. Patent and Trademark Office post-grant proceedings, developed and managed large U.S. and foreign patent portfolios, negotiated patent and technology licenses, and enforced clients’ trade secrets.

Patent Procurement

One of our core competencies is patent procurement, which is known in the field as "patent prosecution." Because we have litigated, challenged and defended so many patents, our approach to prosecution is quite different from most other firms'. We understand that overly broad patents are difficult to enforce and easy to defeat. We understand the value in having every patent specification provide rich and detailed descriptions of all potential alternative implementations of a given innovation - we know that this provides the maximum flexibility in crafting patent coverage that blocks competitors from a given space. We know the importance of keeping patent families "lean" by focusing resources on obtaining patent coverage in key jurisdictions and avoiding the temptation to procure patents in countries where the intellectual property rights provide little competitive leverage. Keeping portfolios lean also enables us to keep patent families "alive,” or pending, which in turn enables us to react to new and sometimes unanticipated developments in the market.

We have broad technical aptitude arising from varied technical degrees and years of representations involving medical devices, polymerization processes, genetic sequencing techniques, semiconductor fabrication and device structure, computer architecture, wireless telecommunications, network data communication, software ranging from microcode to application layer, signal processing, VLSI design, microstructured films, industrial equipment, and immunochemistry.

Post-Grant Proceedings

Our professionals are known for handling many of the highest stakes post-grant matters ever adjudicated by the United States Patent and Trademark Office. Mr. Gardella, for example, regularly serves as lead counsel for both challengers and patent owners in matters having stakes running into the billions of dollars. For instance, he successfully defended the famous TiVo DVR patent which generated well over one billion dollars in licensing revenue. Mr. Gardella also successfully defended before the Patent Trial and Appeal Board numerous patents covering aseptic packaging technologies which are used to process about two billion bottles per year. On the challenger side, he prevailed for St. Jude Medical in an array of post-grant proceedings targeting numerous Medtronic patents directed to renal denervation. He has also prevailed in a wide variety of proceedings for Oracle, eBay and Roche Molecular Diagnostics.

Patent and Trade Secret Litigation

Mr. Gardella started his career as a litigator, and has been the lead architect of many U.S. and international bet-the-company enforcement efforts. These campaigns have involved infringement suits in the United States, Europe and Asia involving both patent infringement and trade secret misappropriation. Most cases have involved co-pending oppositions and inter partes review proceedings before foreign and domestic patent offices, respectively.

Gardella Grace's professionals are also intimately familiar with the latest litigation financing options available in the United States. We tap these resources as appropriate to support clients' enforcement campaigns and sometimes to help fund defense of lawsuits.

Intellectual Property Transactions

Gardella Grace's professionals have decades of experience in negotiating and drafting out-bound and in-bound license agreements. We often monetize our client's portfolios without the need to resort to litigation, although sometimes litigation does prove necessary. Many of our clients also have strategic business partners with which they work collaboratively to develop key intellectual property; many of the agreements we negotiate are in the context of such joint development efforts. We also craft settlement agreements as an extension of successful patent and trade secret enforcement efforts. For many corporate clients we often advise on the intellectual property aspects of employment and supply agreements.

Trade Secret Protection

Trade secrets are largely complementary to patent rights and are often an indispensable component of our intellectual property strategy. For many clients, trade secrets are even more valuable than patent rights. It is critical that sound judgements be made with respect to development of discrete but interrelated strategies for protection of trade secrets and patents. We develop and deploy trade secret policies and training and, when necessary, bring district court actions for misappropriation of trade secrets. Just as importantly, in prosecuting patents we carefully parse the aspects of each innovation which will be maintained as trade secrets. This requires a delicate balancing of the sometimes conflicting requirements of patent law and trade secret law.