Jordana A. Garellek

Jordana Garellek practices in the area of intellectual property. Ms. Garellek has experience in IP litigation, including patent, trademark and copyright litigation, as well as patent prosecution. Ms. Garellek has experience with all stages of IP litigation, including pre-litigation strategic planning, the development of freedom-to-operate, design-around, infringement and invalidity analyses, and the day-to-day management of complex litigations.

Ms. Garellek also has experience with the preparation and defense of fact, expert and corporate witness depositions as well as trial preparation. Ms. Garellek also assists clients with securing patent rights in the United States.

Ms. Garellek has experience in diverse technical areas, including medical devices, streaming media systems, computer software, optical systems, outdoor lighting systems, and household goods. Ms. Garellek additionally has experience with U.S. Patent Trial and Appeal Board proceedings, including inter partes review (IPR) and covered business method patent review (CBM) proceedings.

Ms. Garellek further assists generic pharmaceutical companies with matters arising out of the filing of Abbreviated New Drug Applications (ANDAs) with the U.S. Food and Drug Administration. In addition to her broad IP experience, Ms. Garellek also has experience with issues related to land-use law and zoning that arise in land purchase and development matters.

Ms. Garellek has represented developers and property owners in various zoning matters, including re-zonings and variances, as well as purchasers and sellers in the sale of unused development rights. Ms. Garellek is admitted to practice in New York, New Jersey and Washington, D.C., as well as before the U.S. Patent and Trademark Office.

Ms. Garellek is a 2012 cum laude graduate of Fordham University School of Law, where she was a member of Fordham Intellectual Property, Media and Entertainment Law Journal, and a summa cum laude graduate of the William E. Macaulay Honors College at Brooklyn College, City University of New York (B.S. in Psychology with a Chemistry minor), where she was elected to Phi Beta Kappa. She has a working knowledge of Hebrew.

Representative Matters:

• Obtained a dismissal with prejudice of all asserted claims in a patent infringement case in the U.S. District Court for the Eastern District of Texas on behalf of Epsilon Data Management, LLC on the basis that all asserted claims had been invalidated.
• Affinity Labs of Texas, LLC. v. Clear Channel Broadcasting, Inc. (E.D. Tex.). Represented patent holder in a patent infringement action relating to assertions of infringement by the iHeartRadio music application for streaming radio stations over portable cellular devices.
• Solomon v. O’Connor et al. (D. Mass. 2017). Represented a pro bono client, a disabled art historian working to publicize the life and work of a deceased artist, in obtaining settlement with a complete assignment of all right, title and interest in the artist’s portfolio.
• Obtained a dismissal with prejudice of a patent infringement case in the U.S. District Court for the Northern District of Illinois on behalf of Sears, Roebuck & Company on the basis that an on-line customer preference system did not infringe the asserted patents.
• Represented a developer in a zoning lot merger and purchase of approximately 30,000 square feet of development rights from multiple adjoining properties in connection with the construction of a high-rise luxury building on the Upper East Side of Manhattan.
• Representation of a developer in a zoning lot merger and purchase of approximately 32,000 square feet of development rights from multiple adjoining properties in connection with the construction of a high-rise luxury building on the Upper East Side of Manhattan.
• Represented a condominium in the sale of approximately 14,000 square feet of development rights for the redevelopment of the former Streit’s Matzo Factory on the Lower East Side of Manhattan.
• Represented an affiliate of a realty company in negotiating and closing the transfer of air rights to increase the size of the building to be constructed on Second Avenue at 80th Street.

Admissions:

• New York
• New Jersey
• U.S. Patent and Trademark Office
• U.S. District Court for the Eastern District of New York
• U.S. District Court for the Southern District of New York