Areas of Expertise

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, has served 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.

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, patent litigation, trade secret litigation, and trademark and copyright litigation. His experience spans a broad range of technologies, including aseptic processing, cloud computing, electronics, consumer products 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 several US and international bet-the-company enforcement efforts. These campaigns have involved lawsuits in the United States, Europe and Asia involving both patent infringement and trade secret misappropriation.

Also known in the field as "patent prosecution," patent procurement is one of Gardella Grace’s core competencies, and our approach is very different from that of many other firms. Overly broad patents are difficult to enforce and easy to defeat. As such, we file and obtain targeted claims aimed at protecting must-have features within our clients’ industries, while ensuring every patent specification provides rich and detailed descriptions of all potential alternative implementations to craft patent coverage that blocks competitors from a given space. We also develop portfolios for assertion campaigns designed to withstand invalidity attack and non-infringement posturing.

Trade secrets are largely complementary to patent rights and are often an indispensable component of Gardella Grace’s intellectual property strategy. We find that for many clients, trade secrets are often more valuable than patent rights. As such, we develop and deploy trade secret policies and training and, when necessary, bring district court actions for misappropriation of trade secrets.

Gardella Grace professionals have taken the lead on various large IP centric deals, including the recent acquisition of a firm client for almost one billion US dollars which was based largely on the value of the client’s IP portfolio. We have decades of experience in negotiating and drafting out-bound and in-bound license agreements. 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.