77 West Wacker Dr.\\Chicago, IL 60601-5094\\United States
Jeffrey R. Gargano is a seasoned litigator, focusing his practice on disputes involving intellectual property in US federal courts and before the International Trade Commission (ITC). Jeff counsels clients on overall IP strategy and litigation avoidance. He has litigated cases involving myriad IP law issues, including domestic and foreign patents, trademarks, trade secrets, copyrights, false advertising, and unfair competition. Additionally, he helps clients navigate the regulatory, patent, and antitrust issues unique to pharmaceutical litigation arising under the Hatch-Waxman Act.
Jeff has represented generic and branded companies in district court litigation, inter partes review proceedings, and appeals in more than 30 cases. These matters have involved drugs such as Clindesse®, Rapaflo®, Epiduo®, Eligard®, Pristiq®, Adapalene®, Taclonex®, Dovonex®, Solaraze®, Differin®, MetroGel®, Ortho TriCyclen Lo®, Evozac®, and Nuvigil®.
Jeff has a special interest in counseling Chinese companies looking to enter US markets on all aspects of US intellectual property and competition laws, and has lectured in China on all aspects of US intellectual property law.
A registered patent lawyer with a bachelor's degree in chemical engineering, Jeff has experience working with clients on many diverse technologies, including pharmaceutical compounds and formulations, methods for treating medical conditions, medical devices and surgical procedures, food sciences, 3G and 4G wireless telecommunications, semiconductor manufacturing, circuit protection devices, integrated circuits, and printed circuit boards. His work also extends to computer software and hardware, electro-luminescent materials for flat-panel displays, water-soluble polymeric films, polymeric positive temperature coefficient (PTC) and cross-linking of polymeric materials, ecommerce, business methods and financial products and systems, fitness equipment and physical training methods, sporting equipment, and head impact telemetry systems.
Prior to attending law school, Jeff worked as a test engineer for a large international semiconductor company.
Served as lead trial counsel for Tolmar and Sandoz in five first-to-file Abbreviated New Drug Application (ANDA) litigations for topical dermatological generic products resulting in litigation victories and favorable settlements, and paving the way for five new generic product launches from 2013 to 2015.
Served as lead trial counsel for Elan Pharma and Perrigo in ANDA litigations related to Clindesse® and Pepcid Complete®. In 2017, after an eight-day jury trial, Jeff secured judgment as a matter of law that Perrigo’s generic version of Pepcid Complete® did not infringe the asserted patent.
Served as trial counsel for BlackBerry in a 10-day jury trial in the US District Court for the Middle District of Florida in April 2014 that resulted in a complete defense verdict for BlackBerry when the jury found no infringement of the three asserted patents and that the patents were invalid.
Won a complete victory on behalf of Tolmar and Sandoz in a high-stakes patent appeal at the US Court of Appeals for the Federal Circuit in December 2013 when the court reversed a judgment of the US District Court for the District of Delaware and found all asserted claims of four patents owned by Galderma Research & Development were invalid as obvious.
Served as co-lead counsel for Biomet on a 15-patent declaratory judgment case involving spinal, hip, and knee implants and surgical methods; after defeating a motion to transfer the case to the US District Court for the Eastern District of Texas in 2013, Jeff oversaw an aggressive discovery strategy that resulted in the patentee dropping infringement allegations and granting covenants not to sue and licenses to 10 of the 15 asserted patents. Shortly after the court's Markman ruling and within a week of taking the inventor's deposition on the five remaining patents, the case settled on terms favorable to Biomet.
Represented Solo Cup Company in a $100 million patent infringement case in the US District Court for the Eastern District of Wisconsin. After a seven-day trial, the jury found that Solo Cup did not infringe the asserted patents; the patentee did not challenge the noninfringement finding on appeal, but Solo Cup did appeal dismissal of its inequitable conduct counterclaim. The US Court of Appeals for the Federal Circuit reversed the dismissal of Solo Cup's counterclaim and on the eve of a bench trial on inequitable conduct, the case settled on terms favorable to Solo Cup.
Represented Qualcomm in a patent infringement case in the ITC; in defense of Qualcomm's infringement allegations, Nokia alleged that asserted patents were invalid. Jeff led the invalidity defense of the asserted patents and after a five-day trial, the administrative law judge found that the patents were not invalid.
Served as lead counsel in a copyright infringement case involving the architectural design of a $10 million home in the Virgin Islands. After taking over the case, which had languished for years, Jeff secured summary judgment on all counts on behalf of his clients; judgment was affirmed on appeal to the US Court of Appeals for the Third Circuit.
Awards and Affiliations
Member, Practice Group of the Year, Intellectual Property, Law360 (2019)
Member, Litigation Department of the Year–Intellectual Property, The American Lawyer (2019)
Recognized, Litigation – Patent, Chicago, The Best Lawyers in America (2020)
Recommended, Intellectual property: Patents: litigation (full coverage), The Legal 500 US (2019)
IP Star, Managing Intellectual Property (2012–2019)
Recognized, IAM Patent 1000: The World's Leading Patent Professionals (2013–2019)