What led you to establish your own firm and what advice do you have for somebody considering doing the same?
Getting access to the best associates, agents and paralegals is always a challenge at a big firm. They are in high demand, so for many projects you need to make do with other staff. Starting your own firm enables you to hand-pick your team and provides complete access to these individuals. Conflicts are always a headache at a big firm and that was definitely a motivating factor for me. To someone considering launching a new firm, my advice would be to treat your team like family.
You have worked with companies of all size – from start-ups to Fortune 500 names. How do you adapt the way that you work between entities with such different needs?
In a way, the ultimate need is the same – finding the most effective and efficient solution to a legal problem or issue. One of the biggest differences is the amount of explanation that is required for the client to fully understand the situation, options and rationale underlying your advice. In-house IP lawyers usually need little explanation, whereas start-ups might require a somewhat lengthy run-through of the relevant fundamentals of IP law and strategy. For both types of client, it is essential that they fully appreciate the benefits and risks of each option.
You successfully defended the famous TiVo DVR patent, which went on to earn over $1 billion in licensing revenue . What are your top tips for crafting a winning defence strategy?
A deep understanding of the technology is key to presenting a successful defence. Many, perhaps most, technologies are substantially more complicated and nuanced than they appear at first blush. Appreciating these subtleties can be critical to identifying meritorious arguments. Another useful strategy is to understand your judge’s or examiner’s predilections and tendencies by reading their prior decisions. Some judges or examiners are big picture thinkers who are more interested in fairness and equities than in procedural issues or fine technical distinctions. Others demonstrate a strong propensity to decide cases on issues that some perceive to be procedural technicalities or subtle technical distinctions.
Conversely, you have also won acclaim for challenging various Medtronic patents in nine post-grant proceedings. What are the crucial differences between defending and challenging patents?
When challenging a patent, it is usually the advocate’s job to simplify the technology and provide a short and straightforward explanation of why the supposed technological improvement is obvious. When defending a patent, the advocate’s job is typically to explain all the ways in which the simplified story overlooks the important technical issues and challenges. For both advocates, having a deep and thorough understanding of the technology is vital. This enables the challenger to identify simple themes that avoid demonstrable technical complexities. Conversely, the patent owner’s counsel can thereby demonstrate technical difficulties that undercut the simplified assumptions on which the challenge is usually based.
What do you expect to be the next big tech sectors to take off – and how can companies and investors capitalise from these?
Biotech and AI appear to be on a steep trajectory. Their growth has been exponential and is largely driven by a common factor – the ubiquity of cloud computing power. Computer modelling is now the source of many therapeutic innovations and the enormity and availability of computing resources is making AI feasible in a wider array of applications. The convergence of biotech and computing should present interesting and unique opportunities over the next decade. There may be increased demand for services or solutions that provide pharma and biotech companies with the computing solutions needed to drive the next generation of therapies.
Greg Gardella is the president of Gardella Grace. He graduated with a bachelor’s in mechanical engineering (magna cum laude), a master’s in electrical engineering (grade point average 3.9/4) from the University of Minnesota and a JD from the University of Michigan (cum laude). He is recognised as an expert in the field of post-grant proceedings and speaks frequently on the topic. He is also experienced in IP transactions, IP litigation and patent prosecution. Mr Gardella successfully defended the famous TiVo DVR patent, which thereafter generated well over $1 billion in licensing revenue.
Click here to see his IAM 300 2020 profile.