Gardella Grace has extensive experience in procurement, licensing and enforcement of patents and trade secrets. The following is merely a brief representation of the variety and scope of matters our team of IP professionals has successfully managed on our clients’ behalf.
Steuben Food, Inc. v. Shibuya Hoppmann Corp. et al.
Gardella Grace P.A., led by Principal Cook Alciati, obtained a verdict of more than $38 million (plus an amount of prejudgment interest to be determined) in favor of its client Steuben Foods, Inc. following a week long jury trial before Chief Judge Colm F. Connolly in the United States District Court for the District of Delaware. The jury found all six asserted claims infringed and not invalid and awarded the full amount of damages requested. The verdict comes after 10 years of litigation where Greg Gardella worked with Mr. Alciati to defend the validity of the patents-in-suit through both reexamination and inter parties review. Like all verdicts, this is subject to post-trial motions and appeal.
The verdict form can be found here.
St. Croix Surgical Systems v. Cardinal Health, Inc.
After Gardella Grace refined and sharpened a portfolio of patents directed to novel medical devices, our team, led by Principal Cook Alciati, successfully enforced the new patents against two major industry players resulting in seven figure settlements for our client. One case settled in the midst of Markman briefing, the other settled following a Markman order that turned in St. Croix’s favor on every disputed construction. Principal Greg Gardella led the prosecution effort after taking over the portfolio just a few years before patent expiration.
The complaint can be found here.
Fulfillium, Inc. v. ReShape Medical, Inc. et al.
After Gardella Grace refined and sharpened a portfolio of patents directed to novel medical devices, our team, led by Principal Cook Alciati, successfully enforced the new patents and related trade secrets in the United States District Court for the Central District of California. The last defendant settled day before trial resulting in a seven figure settlement that equated to a 60 percent royalty on sales of the accused product. Principal Greg Gardella led the prosecution effort after taking over the portfolio just a few years before patent expiration and led the effort at the Patent Trial and Appeal Board to defeat multiple petitions for inter partes review, which were denied before institution.
The inter partes review brief (Patent Owner Preliminary Response) can be found here.
A representative complaint can be found here.
Roche Molecular Systems/Ariosa Diagnostics, Inc. v. Sequenom, Inc.
Our professionals represented Ariosa Diagnostics (which was acquired by Roche Molecular Systems) in a bet-the-company case regarding technology involving the use of massively parallel sequencing for the detection of nucleic acid of fetal origin in maternal serum or plasma. Gardella Grace prevailed in multiple inter partes review proceedings.
Petitions can be found here and here.
The related reexamination request can be found here.
Saint Jude Medical v. Medtronic
In this case, patentability challenges sought to establish Saint Jude Medical’s freedom to operate in the renal denervation market, which was projected to grow quickly to more than $3 billion annually. Our team served as lead counsel for requester Saint Jude Medical in nine inter partes reexaminations, and every challenged claim was finally adjudicated to be invalid on multiple grounds.
A representative reexamination request can be found here.
10X Genomics, Inc. v. Bio-Rad Laboratories
Gardella Grace filed twelve inter partes review petitions on behalf of biotechnology company 10X Genomics, Inc. against five patents asserted by Bio-Rad in parallel ITC and district court cases. Our team also filed three reexamination requests against patents asserted by Bio-Rad. In a victory for 10X Genomics, all reexamination requests were granted as to every ground and every claim.
A representative request for reexamination can be found here.
A representative petition can be found here.
Steuben Foods, Inc. v. Nestle USA
Our professionals represented patent owner and aseptic food and beverage manufacturer Steuben Foods in cases involving aseptic bottling technology used by Nestle USA to package more than 2 billion bottles per year. Our team defended ten inter partes review proceedings filed against five patents and prevailed at the Patent Trial and Appeal Board in eight out of the ten cases.
A representative brief can be found here.
TiVo v. DishNetworks
This case involved TiVo’s seminal “time warp” patent on DVR technology. Our team assumed responsibility for the matter after the patent had been finally rejected in a reexamination. Our professionals introduced new evidence and obtained complete reversal of the final rejection. After the patent was affirmed, TiVo collected more than $1 billion in licensing revenue from DishNetworks, Verizon, Microsoft, Cisco and others.
A response (brief) can be found here.
Oracle Corp. v. Clouding IP
Our team served as lead counsel for computer software company Oracle Corp. in more than a dozen inter partes review proceedings in which all petitions were granted. We also negotiated an immediate and very favorite settlement for the company.
A representative petition can be found here.
Areas Of Expertise
Intellectual Property and Related Litigation
Our multiple-award-winning team has been recognized for its creativity, talent, and ability to resolve complex disputes quickly and efficiently. Gardella Grace P.A. is known for its innovative legal strategies involving patents, trademark, copyright, unfair competition, and business litigation. Our lawyers have regularly notched victories for clients in bet-the-company matters having stakes ranging from millions to billions of dollars.
Intellectual Property Procurement and Transactions
Gardella Grace’s transactional group specializes in the procurement of patents, trademarks and copyrights on behalf of a wide array of clients, from major international corporations to tech start-ups. We have scores of years of collective experience prosecuting, or obtaining, intellectual property in the biotech, chemical, industrial, medical devices, financial, energy, materials, communication and technology sectors. Our team can handle virtually any technology. Our lawyers also architect, negotiate and draft agreements across these sectors.
Post-Grant and other Administrative Proceedings
Our team has handled some of the highest stakes post-grant matters ever adjudicated by the United States Patent and Trademark Office, having served as lead counsel for both challengers and IP owners in well over one hundred proceedings. Gardella Grace’s breadth of experience across litigation and prosecution matters is a particularly valuable asset in these matters, which involve hybrid administrative proceedings that have aspects in common with both litigation and prosecution.