Can you tell us about some of the biggest obstacles you have faced in your professional life – and how you have overcome them?
My biggest obstacle came into focus about seven years, just after I became a principal at Fish & Richardson. At that time, I was in the middle of transitioning my practice from litigation, which I found unduly confrontational, to patent re-examination, counselling and opinion work, where I felt that I could create the most value. I realised that I needed a technical degree in addition to mechanical engineering because I was no longer going to be handling litigation that would support spending scores of hours coming up to speed on each technology. Getting a master’s degree in electrical engineering while working full time as a principal and helping to raise two young children was overwhelming at times. By pacing myself – it took me roughly six years to complete the degree – I made it across the finish line.
What steps would you like to see the next USPTO director take when it comes to inter partes review proceedings at the PTAB – and how likely do you think they are to happen?
I believe that properly incentivising innovation is key to the US economy and there appears to be a growing consensus in this regard. The patent troll problem has been addressed and, as is typical in such situations, the pendulum has probably swung too far the other way. Iancu has implemented policies that seek to bring the laws and policies back into a state of equity and fairness that strikes a proper balance between the rights of IP holders and those of corporate America. As with most issues of human or societal importance, the right answer is usually in the middle. And I think that is where we are headed.
As the America Invents Act celebrates 10 years in force – what did it get right and what needs changing?
See my answer to the question above.
What are your key recommendations for conveying highly technical concepts so as to get buy in from non-experts?
I think that IP professionals generally underestimate the ability of lay people to judge complex technical issues. While a person without the specific knowledge might not fully appreciate all of the technical details, they understand the most important thing – that the plaintiff is telling one story and that the defendant is telling another – and that the two are fundamentally opposed. Properly assessing which is more credible does not necessarily require fulsome appreciation of each and every technical concept. Rather, it generally requires the skills that all of us are equipped with, such as the ability to gauge truth from deception. Laypersons are extraordinarily good at this. While they might not be able to furnish satisfying technical explanations justifying their conclusions, they generally reach the right result, in my opinion.
How do you build trust and understanding with clients to ensure that they make the most informed IP decisions?
In the course of most representations, ethical and smart practitioners will give the client advice that disadvantages the law firm but benefits the client. When patrons see this type of advice being given on a regular basis, they know that you value their wellbeing above your own. This is the cornerstone on which trust is built.
Managing Principal [email protected]
Greg Gardella is the managing principal of Gardella Grace. He graduated with a bachelor of science in mechanical engineering (magna cum laude), a masters in electrical engineering from the University of Minnesota and a juris doctor from the University of Michigan (cum laude). He is recognised as an expert in the field of postgrant proceedings and speaks frequently on the topic. Mr Gardella is also experienced in IP transactions, IP litigation and patent prosecution. He successfully defended the famous TiVo DVR patent, which thereafter generated well over $1 billion in licensing revenue.
Click here to see his IAM Patent 1000 2021 profile.