Bruce M. Gagala

Member

Mr. Gagala practices in all aspects of domestic and international patent law, with primary emphasis on litigation, dispute resolution, licensing, counseling and patent preparation and prosecution. He counsels and advises numerous U.S. and foreign clients on patent validity, infringement, and licensing matters, as well as general trademark matters.

Mr. Gagala has extensive experience in the trial courts and in appeals, including appeals to the Court of Appeals to the Federal Circuit, regarding patent, trademark, trade secret, and other intellectual property related issues. He was co-counsel to Pall Corporation in Pall Corporation v. MSI, a companion case to Markman v. Westview Instruments. He has prepared and negotiated numerous patent licenses, and has considerable experience in interferences, and alternate dispute resolution. He has served as mediator and arbitrator.

Mr. Gagala has prepared and prosecuted patents for U.S. and foreign clients in a variety of technical fields, especially relating to chemistry, pharmaceuticals and biotechnology. Recent technologies with which he has been involved include chemical compositions and processes, pharmaceuticals and pharmaceutical compositions, medical treatments, diagnostic assays, polymers, foods, batteries, and medical devices.

Prior to joining the firm, Mr. Gagala was a chemist with the Institute of Gas Technology.

Professional Affiliations

• Intellectual Property Owners Association (IPO)

Honors

• AV^® Preeminent™ Peer Review Rated (Highest Rating) – Martindale-Hubbell
• Selected by peers as a Leading Lawyer in Intellectual Property Law – Leading Lawyers Network
• Listed among the Top Lawyers in Illinois in Intellectual Property Law – Chicago Lawyer

Representative Matters

Contested Proceedings

• GlaxoSmithKline v. Teva Pharmaceuticals USA, Inc. D. Del., 2008 (pending)
• Elan et al v. Teva Pharmaceuticals USA, D. N. J. , (pending)
• Abbott Laboratories, Inc. et al. v. Teva Pharmaceuticals USA, N.D. Il. , Civil Action No. 1:08-cv-01243 (pending)
• DSM Desotech, Inc. v. 3D System Corporation,  N.D. Il., Civil Action No.  08 C 1531 (pending)
• Bayer Pharmaceuticals v. Teva Pharmaceuticals USA, D. Del., Civil Action Nos. 06-234-SLR and
  07-195-SLR (consolidated) (pending)
• Abbott Laboratories et al. v. Teva Pharmaceuticals USA, D. Del., Civil Action No. 02-1512-KAJ (summary judgment of noninfringement favorable to Teva)
• Abbott Laboratories et al. v. Novopharm Limited, N.D. Ill., Civil Action Nos. 00C 2141, 00C-5094 and 01C-1914  (summary judgment of noninfringement favorable to Novopharm)
• Worthington Armstrong Ventures v. United States Gypsum Corporation, E.D. Pa., Civil Action
  No. 00-CV-6369 (settlement favorable to USG)
• Pall Corporation v. Micron Separations, Inc., D. Mass., Civil Action No. 86-1427 WGY (decision favorable to Pall)
• Pall Corporation v. Hemasure, D. Mass., Civil Action No. 99-675  (settlement favorable to Pall)
• Gambro et al. v. Pall Corporation, D. Colo., Civil Action No. 99-M-675(MJW) (settlement favorable to Pall)
• United States Gypsum v. Lafarge Corporation, N.D. Ill., Civil Action 03 C 6027 (pending)
• United States Gypsum v. Kruzsak (complaint resolved before filing in favor of USG)
• Astrazeneca et al. v. Dexcel et al., D. Del., Civil Action No. 09-CV-358 (settlement favorable to Dexcel)
• Novartis v. American Pharmaceutical Partners, N.D. Ill. (settlement favorable to APP)
• Union Carbide Corporation v. The Dow Chemical Company, D. Del., (settlement favorable to UCC)

Mr. Gagala also has represented clients successfully in the following matters:

Alternate Dispute Resolution

• Petrolite Corporation v. Quaker Chemical Co. (settlement favorable to Petrolite)
• Kleinman v. Krieg – Dr. Kleinman of the FDA named inventor by arbitrator on applications for CpG motif for which Krieg claimed he was the inventor

Patent Interferences

• Mitsuya et al. v. Mimoto et al., Interference No. 104,153
• Kopin v. Wank, Interference No. 103,778
• Devine v. Hosler, Interference No. 103,588
• Wickham et al. v. McClelland et al., Interference No. 104,432
• Saito et al. v. Kovesdi et al., Interference No. 104,756
• Kovesdi et al. v. Imler et al., Interference No. 104,822
• Wang et al. v. Kovesdi et al., Interference No. 104,825
• Kovesdi et al. v. Zhang et al., Interference No. 104,827
• Gencell v. Kovesdi et al., Interference No. 104,829
• Koch v. Japan Tobacco, Interference No. 105,168

Inventorship Investigation

• NIH inventor named sole inventor of application for which Millennium Chemical Co. initially claimed inventorship/ownership, after investigation and assertion of inventorship by LVM

Bar Admissions and Registrations

• Illinois, 1977
• Registered to practice before the U.S. Patent and Trademark Office

Courts

• U.S. District Court for the Northern District of Illinois (Member, Trial Bar)
• U.S. Court of Appeals for the Federal Circuit

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