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Greg G's bio..

Practice areas
Patents

Technology areas
Business Methods
Electronics
Computer Hardware
Internet
Medical Devices
Software
Telecommunications

Education
University of Michigan J.D. 1995 cum laude
University of Minnesota M.S. Electrical Engineering (Thesis: Hybrid Analog/Digital Telephony System for Echo Cancellation)
University of Michigan, Ann Arbor B.S. Mechanical Engineering magna cum laude

Professional experience
Greg Gardella is a Principal in the Twin Cities office of Fish & Richardson P.C. Mr. Gardella is a former litigator, having spent the first several years of his practice litigating high stakes patent cases. Mr. Gardella now practices in the areas of patent prosecution, reexamination, reissue proceedings, strategic counseling, due diligence investigations, pre-suit investigations, licensing, preparation of infringement and validity opinions, and trade secret enforcement. Mr. Gardella manages significant portions of patent portfolios of various mid-sized and large corporations. Reexamination is one of Mr. Gardella's specialties - he has represented both patent owners and challengers in well over 20 reexamination proceedings. Mr. Gardella also has particularly deep experience in strategic enforcement and freedom-to-operate counseling wherein he advises companies how best to enforce their patent portfolios and take defensive measures to circumvent patent assertions by competitors.

Technical expertise
Mr. Gardella has degrees in both electrical and mechanical engineering, having obtained both degrees in the top 10% of his class. Mr. Gardella has extensive experience in the following technical areas: semiconductor fabrication and device structure (e.g. vapor deposition, etch, patterning, spin-on coatings, implant, epitaxy, LEDs, power MOSFETs, solar cells, LCDs), computer architecture (e.g. superscalar uPs, graphics/memory controllers, I/O controllers, adapters, bridges, DMA, cache coherency, power management), wireless telecommunications (e.g. GSM, IS-95/54, GPRS and 3G standards, including WCDMA, CDMA-2000, and UMTS; security protocols; vocoding; bridging; duplexing), network data communication (e.g. Bluetooth and other wireless protocols, access control, routing, ATM, enterprise platforms, ASPs, VPNs), software ranging from microcode to application layer (e.g. middleware, OS, SSL, drivers, application layer suites, environments including C, C++, Java, XML, HTML, TEK, Perl, HDLs), medical devices (e.g. implantable devices, surgical devices, automated pharmacy systems, defibrillators, spinal implants, slow release implants, endoscopic devices), signal processing, embedded controllers, VLSI design, microstructured films, and various types of industrial equipment.

Presentations and publications
"Inter Partes and Ex Parte Reexamination: Recent Trends and Tactics," Minnesota CLE (2009).

"Patent Reexamination: Trends and Tactics," New York CLE (2009).

"Recent Developments in the Law of Inequitable Conduct: The Duty to Cite Co-Pending Applications," California CLE (2009).

"Inter Partes Reexamination: Tactics and Recent Trends," Colorado CLE (2009).

"United States Reexamination Practice: Recent Trends and the Choice Between Ex Parte and Inter partes Procedures," John Marshall Law Review (coming 2009).

"Post-KSR Drafting Tips," Minnesota CLE (2008).

"The New Framework of Patent Exhaustion: The Supreme Court's Holding in Quanta Computer v. LG Electronics," Minnesota CLE (2008).

"Best Practices for Managing High Volume Patent Portfolios: Lessons Learned from the Battlefront," California CLE (2008).

"Post-KSR Decisions on Obviousness: Practical Implications for Patent Prosecution, Opinion and Enforcement Practice," Minnesota CLE (2008).

"In re Seagate: Implications for Opinion Practice and Freedom to Operate Analyses," Minnesota CLE (2007).

"USPTO Final Rule Changes for Continuations and Claims," Minnesota CLE (2007).

"The Newly Proposed Amendments to the Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals," Minnesota CLE (2007).

"MIPLA Comments on the Proposed Appeals Rules and a Recap of the New Rules on Continuation Practice and Examination of Claims," Minnesota CLE (2007).

"The Newly Proposed Amendments to the Rules of Practice Before the Board of Patent Appeals and Interferences in Ex Parte Appeals," Minnesota CLE (2007).

"Changes to Practice for Continuing Applications, Requests for Continued Examination Practice, and Applications Containing Patentably Indistinct Claims," Minnesota CLE (2007).

"The Patent Reform Act of 2007 and Update on the New Patent Rules Packages," Minnesota CLE (2007).

"The New Patent Office Rule Package on Continuation Practice," Minnesota CLE, moderator (2007).

"CEO's Guide to Patents," Twin Cities Business Journal Seminar, moderator (2007).

"The Supreme Court’s Decision in Medimmune v. Genentech: Declaratory Judgment Actions by Licensees," Minnesota CLE (2007).

"For Whom the Bell Trolls," Minnesota Lawyer Newspaper, In House Counsel section (2006).

"DSU Medical v. JMS Co. en banc: The New Standard for Inducement," Minnesota CLE (2006).

Author, Official Comments of the Minnesota Intellectual Property Law Association on the Proposed USPTO Rules on Information Disclosure Statements (September 2006).

Moderator, "The USPTO's Proposed Rules on Information Disclosure Statements," Minnesota CLE (2006).

"Top Ten IP Mistakes Made by Start-Up Companies," Upsize Magazine (June 2006).

"Patent Peer Review Pilot and other Proposed Changes at the USPTO," Minnesota CLE (2006).

"Claim Construction in a Post-Phillips World," Minnesota CLE (2006).

Moderator, "The USPTO's Proposed Rules on Continuations and Examination," Minnesota CLE (2006).

"Proposed Amendments to the District of Minnesota’s Local Rules for Patent Cases," Minnesota CLE (2005).

"Symbol Technologies v. Lemelson: the Re-Birth of Prosecution Laches," Minnesota CLE (2005).

"Recent Amendments to Rules of Practice Governing Interferences," Minnesota CLE (2005).

"Patent Reform Proposals and Legislative Update," Minnesota CLE (2005).

"Cooperative Research and Technology Enhancement (CREATE) Act of 2004," Minnesota CLE (2005).

"Prosecution of Business Method Patent Applications: Rules, Procedures and Tactics," Minnesota CLE (2005).

"Keeping Your IP Options Open," IEEE Spectrum (2003), an article on patent prosecution strategies designed to maximize intellectual property protection while minimizing expense.

"How Not to Get Squeezed - Lessons to Learn from the Ongoing Patent Battle Over the Blackberry E-mail System," IEEE Spectrum (2003), an investigative article discussing patent prosecution and litigation tactics in the context of the NTP v. Research in Motion lawsuit.

"Patent Pitfalls for Programmable Devices," Patent Strategy & Management (2000), an analysis of an alternate theory of patent infringement for computer controlled, programmable devices.

Litigation examples
Harrison v. Fiskars, Inc. (E.D. Tex. 1999) - Successfully defended trade secret case involving multifunction hand tools.

Compaq v. TriGem et al (S.D. Tex. 2002) - Multiple patent suit involving processor, bus and network architectures. Settled on favorable terms.

Exxon Corporation v. Dow Chemical Co. (E.D. Tex. 1998) - Prevailed in patent infringement suit involving ionic metallocene catalysts for the polymerization of alpha olephins.

Abbott Laboratories v. Johnson and Johnson Clinical Diagnostics and Abbott Laboratories v. Ortho Diagnostics and Diamedix Corp. (N.D. Ill. 1996) - Prevailed for Johnson & Johnson against patent infringement suits brought by Abbott Laboratories involving enzyme immunoassays.

Avery-Dennison v. 3M Innovative Properties - Involved techniques for manufacturing retroreflective, microstructured film; settled on favorable terms.

Memberships
Chairman, Minnesota Intellectual Property Law Association, Intellectual Property Law Revisions Committee, 2004-2008.

Commissioner, City of Independence Planning Commission, 2005-2009.

Intellectual Property Committee, Institute of Electrical and Electronics Engineers, 2004-2007.

Member: American Intellectual Property Law Association, Licensing Executives Society.

Bar admissions
Admitted to the bar in Minnesota, Illinois, the Court of Appeals for the Federal Circuit, the United States District Court for the Northern District of Illinois, and the United States District Court for the Western District of Wisconsin.

Registered to practice before the United States Patent and Trademark Office.

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