Gardella Grace PA

Gardella Grace represents clients from start-ups to multinational corporations in a customised, personal manner that differs from those of larger IP firms. The professionals at Gardella Grace bring a variety of perspectives to each matter due to their uniquely broad experience in IP enforcement and patent procurement.

The Gardella Grace team has directed multinational enforcement campaigns, procured large international patent portfolios, defended and defeated patents in post-grant proceedings, licensed IP portfolios, developed and implemented defensive and risk mitigation strategies for large corporations, and executed trade secret protection programmes.

Patent procurement

Because the firm has litigated, challenged and defended so many patents, its approach to prosecution is very different from that of most other firms. Overly broad patents are difficult to enforce and easy to defeat, and the firm understands the value in having every patent specification provide rich and detailed descriptions of all potential alternative implementations of a given innovation. This provides maximum flexibility in crafting patent coverage that blocks competitors from a given space.

Gardella Grace also knows 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 IP 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.

The Gardella Grace team has broad technical aptitude arising from varied technical degrees and years of representations involving medical devices; polymerisation 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

Gardella Grace professionals are known for handling many of the highest-stakes post-grant matters ever adjudicated by the US Patent and Trademark Office. Greg H Gardella, the firm’s president, regularly serves as lead counsel for both challengers and patent owners in matters having stakes running into the billions of dollars – for example, he successfully defended the famous TiVo DVR patent, which generated well over $1 billion in licensing revenue.

On the challenger side, Mr Gardella 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

The team’s enforcement campaigns have included infringement suits in the United States, Europe and Asia involving both patent infringement and trade secret misappropriation.

Gardella Grace’s principal, Cook Alciati, has experience specifically in complex commercial litigation, trade secret litigation, and trademark and copyright litigation across a broad range of technologies, including aseptic processing; electronics; LEDs; footwear; sporting equipment; and medical devices, including implantable devices, wound closure devices and obesity treatment devices. His unique understanding of clients’ needs and concerns come from years of in-house experience.

Mr Gardella was lead architect of many US 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.

Gardella Grace professionals are also intimately familiar with the latest litigation financing options available in the United States. The firm will tap these resources as appropriate to support clients’ enforcement campaigns and sometimes to help fund defence of lawsuits.

IP transactions

Gardella Grace professionals have decades of experience in negotiating and drafting out-bound and in-bound licence agreements. The firm often monetise our client’s portfolios without the need to resort to litigation, although sometimes litigation does prove necessary.

Many of Gardella Grace’s 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. The firm also crafts settlement agreements as an extension of successful patent and trade secret enforcement efforts. Many corporate clients are advised on the IP aspects of employment and supply agreements.

Contact details

Gardella Grace PA
80 M Street SE
1st Floor
Washington DC 20003
United States

Professional contacts

Sample client list

  • 10X Genomics
  • Roche Molecular Systems
  • Saint Jude Medical
  • St Croix Surgical Systems
  • Steuben Foods

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