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Highly recommended - Individuals: prosecution
“Gardella Grace is an outstanding firm. Its practitioners are wonderful people, have great legal minds and provide an excellent service. They are really smart, strategic, reliable and achieve exceptional results. They provide the full scope of IP services and have amazing depth, despite being a smaller outfit.” Giving the ensemble its name are Greg Gardella and Natalie Grace, who along with Cook Alciati act as the sole patent counsel for Aon Corporation. “Greg is business minded, professional and thorough. He offers great insight and always keeps the bigger picture in mind.” Grace is a first-rate prosecutor who offers a tailored service to all of her clients. She also brings a wealth of technical skill to the table, particularly in the mechanical and software industries. “Cook is a great, creative litigator with big firm experience.” “Greg and Cook are excellent attorneys. They are very responsive, knowledgeable and provide excellent strategic advice.”
Highly recommended - Individuals: post-grant proceedings
Mr Greg H Gardella
Greg H Gardella has been honoured as one of the best lawyers in the United States for multiple consecutive years and has likewise received various awards and recognition from Managing Intellectual Property, Super Lawyers and Who’s Who Legal. He has also repeatedly been named as one of the nation’s top post-grant practitioners by IAM, which previously reported that “the phenomenal Greg Gardella is extremely experienced in the post-grant space and a dynamic all-round patent consultant” and noted that his “former big-ticket patent litigation experience has served him well in contested re-examination proceedings, of which he is regarded a master”.
Mr Gardella successfully defended the famous TiVo DVR patent which thereafter generated over $1 billion in licensing revenue. Before the PTAB Mr Gardella also successfully defended four patents covering aseptic packaging technologies, which are used to process approximately 2 billion bottles per year. On the challenger side, he prevailed for St Jude Medical in nine post-grant proceedings targeting numerous Medtronic patents, which purportedly covered the billion-dollar denervation industry. In these cases, every challenged claim was finally adjudicated to be invalid on multiple grounds.
Mr Gardella was also the editor of a treatise on post-grant practice entitled Post Grant Proceedings Before the Patent Trial and Appeal Board, published by the Practicing Law Institute. He has frequently lectured on post-grant proceedings and strategies for the effective execution of concurrent litigation, post-grant proceedings and patent prosecution.
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, patent procurement and licensing.
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.
Because the firm has challenged and defended so many patents in litigation, its approach to prosecution is very different from that of most other firms. 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 it to keep patent families ‘alive’, or pending, which in turn enables it 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; very large-scale integration design; micro-structured films; industrial equipment; and immunochemistry.
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 lawsuits in the United States, Europe and Asia involving both patent infringement and trade secret misappropriation.
Cook Alciati, a Gardella Grace principal, 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 lawsuits in the United States, Europe and Asia, spanning 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 engages these resources as appropriate to support clients’ enforcement campaigns and sometimes to help fund defence of lawsuits.
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. Further, many corporate clients are advised on the IP aspects of employment and supply agreements.