Elizabeth Gardner


New York

Read full biography at www.orrick.com

Elizabeth Gardner, a partner in the New York Office, handles a variety of patent-related matters. Her practice is focused on patent litigation, post grant proceedings, and licensing.

For more than 20 years, Elizabeth has represented clients in a broad range of technology areas, including in the chemical, pharmaceutical, biotech, medical products, and medical diagnostics industries. She has represented clients in numerous bench trials, jury trials, and pre-trial proceedings in both the Federal district courts and the International Trade Commission. She has also handled and argued appeals before the U.S. Court of Appeals for the Federal Circuit, and has represented clients in patent office proceedings including inter partes reviews (IPR), reexaminations, and interferences.

Ms. Gardner also regularly advises clients with respect to various commercial transactions involving intellectual property, including acquisitions, licenses, development agreements, and venture capital investments. This work includes the negotiation and drafting of all types of technology related agreements, as well as the underlying IP due diligence necessary to advise her clients on risk, strategy, and deal structure.

Ms. Gardner has been recognized by Managing Intellectual Property as a New York “IP Star” and one of the “Top 250 Women in IP.”

Medinol in the assertion of patents relating to coronary stents against Cordis and Johnson & Johnson in the Sothern District of New York.

Umicore in multiple Inter Parties Review proceedings instituted by the United States Patent and Trademark Office challenging the validity of patents owned by competitor BASF Corporation claiming catalysts and diesel exhaust gas treatment systems.

Covidien in defense of its single incision laparoscopic access device against patent infringement claims brought by Applied Medical in the Central District of California.

Organon and Biotechnology General in the assertion of patent claims protecting Organon's branded MIRCETTE® product against Barr and Duramed's generic oral contraceptive.

Teva Pharmaceuticals in defense of patent infringement claims brought in the Southern District of New York against Teva's generic Efavirenz product.

Barnes & Noble in defense of its NOOK® eReader against claims brought by Microsoft Corporation in the ITC for infringement of patents relating to computer software.

Boston Scientific in the assertion of patent claims covering drug eluting stents against Cordis and Johnson & Johnson in the District of Delaware.

Infineum in the assertion of patent claims covering lubricating oil compositions against Afton Chemical Co. in the District of Delaware.

Posts by: Elizabeth Gardner

Federal Circuit Reverses Patent-Ineligibility Ruling on Motion to Dismiss Due to Factual Disputes

Berkheimer v. HP Inc., Fed. Cir. (February 8, 2018)

On Thursday, February 8, the Federal Circuit decided Berkheimer v. HP Inc.  It ruled, for the first time, that a district court had engaged in improper fact finding when deciding a patent claimed ineligible subject matter under the Supreme Court’s Alice Corp. v. CLS Bank decision a motion for summary judgment.  This case has the potential to impact on the common strategy of seeking early dismissals under 35 U.S.C. § 101 and Alice. READ MORE

Court Reconsiders and Grants Motion to Transfer for Improper Venue in Light of TC Heartland

Stuebing Automatic Machine Company v. Allan Gavronsky d/b/a Matamoros Machine Shop, et al., S.D. Ohio (June 12, 2017) (Judge Karen L. Litkovitz) 

Under 28 U.S.C. § 1400(b), venue is only proper in a patent infringement suit in a jurisdiction (1) where the defendant resides, or (2) where the defendant has committed acts of infringement and has a regular and established place of business. The Supreme Court’s decision in TC Heartland focused on the first test, holding that a defendant “resides” only in its state of incorporation, not that personal jurisdiction over the defendant exists, as the Federal Circuit previously held. That narrowing of the first test put renewed focus on the second test, in particular whether a defendant maintained a “regular and established place of business.” In the wake of TC Heartland, Judge Karen L. Litkovitz granted the defendants’ motion to transfer six months after she initially denied it. READ MORE

Joining an IPR Could Prevent Recovery Under § 285

Order Dismissing Case as Moot, MD Security Solutions LLC, v. Protection 1, Inc., M.D. Fl. (Sep. 26, 2017) (Judge Paul G. Byron)

There may be an unappreciated cost in pursuing a patent validity challenge at the PTAB rather than at the District Court. Litigants choosing the PTAB route may deprive themselves of the right to recover attorneys’ fees.

In MD Security Solutions LLC, v. Protection 1, Inc., plaintiff MD Security Solutions (“MD”) sued for patent infringement, and defendant Protection 1 counterclaimed for a declaratory judgment of non-infringement and invalidity. Shortly afterwards, a third party filed an IPR on the patents-in-suit, and Protection 1 joined the IPR. Given the IPR, the parties agreed to stay the case pending its resolution. The PTAB invalidated the asserted patent claims, and the patentee/plaintiff allowed that decision to become final by choosing not to appeal. Despite that, Protection 1 sought to keep the case alive by seeking attorneys’ fees under 35 U.S.C. § 285 from MD, whom Protection 1 deemed a “patent troll.” In part because the deadline to appeal had already expired by the time Protection 1 sought leave to take its discovery, the trial court had other ideas. READ MORE

Details Matter: Two Courts’ Approaches to Personal Jurisdiction and Venue

Report & Recommendation to Deny Motion to Dismiss or Transfer, MyMail, Ltd. v. Yahoo!, Inc., E.D. Tex. (August 17, 2017) (Magistrate Judge Roy Payne)

Order Granting Motion to Dismiss, The Proctor & Gamble Company v. Ranir, LLC, S.D. Ohio (August 17, 2017) (Judge Timothy Black)

As we’ve been reporting, patent venue case law continues to develop on multiple fronts in the aftermath of the Supreme Court’s decision in TC Heartland.  In a pair of decisions discussed below, two jurisdictions—the Eastern District of Texas and the Southern District of Ohio—took contrasting approaches to how a defendant’s response to personal jurisdiction allegations affected the defendant’s ability to challenge venue. READ MORE