Gregory B. Sanford
Overview
Gregory Sanford is an experienced intellectual property litigation partner in the Chicago office of Kirkland & Ellis LLP. His practice focuses on assisting clients with their patent, contract, trade secret, and high tech litigation needs. He also advises clients on active and prospective litigation and alternative dispute resolution challenges, as well as assessing and advising clients regarding intellectual property opportunities and risks.
Gregory has extensive experience representing clients in complex patent infringement, contract litigation, and trade secret litigation in a wide range of forums, including federal district courts around the country, as well as in proceedings before the U.S. International Trade Commission and the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office. He also has experience representing clients in appellate matters before the Seventh Circuit and Federal Circuit. Gregory also has been involved in many mediations and arbitrations, including representing clients in single and multi-arbitrator hearing proceedings. Gregory also has experience working with attorneys in other countries as part of multi-jurisdiction litigation efforts.
Gregory has worked with clients of all sizes, from individual inventors to large multinational corporations, across many industries such as medical devices, small molecule pharmaceuticals, biosimilar pharmaceuticals, home appliances, computer software, wireless communication, medical devices, semiconductors and power amplifiers.
Gregory is active in pro bono work, including representing individuals with Americans with Disabilities Act claims, constitutional claims under 42 U.S.C 1983, Fair Housing Act and Illinois Human Rights Act claims, as well as representing a client on appeal before the Seventh Circuit. Gregory is currently a member of the Illinois Committee of the United States Commission on Civil Rights.
Experience
Representative Matters
Burkhart v. Arthrex, Inc. (Fla.): Represented Plaintiff, the preeminent surgeons in arthroscopic shoulder repair, in a breach of contract action against Arthrex regarding surgical products, technologies, and techniques developed by Dr. Burkhart.
Sasso v. Medtronic (Ind.; Tenn.): Represented Medtronic in defense of breach of contract and misappropriation of trade secret litigation relating to Medtronic spinal products and technologies.
DexCom, Inc. v. Abbott Diabetes Care Inc. (D. Del.; USPTO): Led team opposing inter partes review petitions filed against two continuous glucose monitoring system patents, and secured denial of institution on one petition and in the other obtained ruling denying invalidation of numerous challenged claims.
SharkNinja Operating, LLC et al. v. Dyson, Inc., et al. (D. Mass): Represented Dyson in defense of patent infringement claims by competitor alleging that Dyson’s cordless vacuum products infringed asserted patents.
Abbott Cardiovascular Systems, Inc., et al. v. Edwards Lifesciences Corp. et al. (D. Del.): Represented Abbott against competitor selling infringing heart repair device for transcatheter repair of the mitral valve repair.
ZimmerBiomet (AAA Arbitration): Acted as second chair trial counsel for ZimmerBiomet in an arbitration over breach of contract and license claim against ZimmerBiomet, successfully defending client against all of the claimant's alleged breach claim.
Janssen Biotech, Inc. v. Celltrion Healthcare Co. Ltd., et al. (D. Mass.; Fed. Cir.): Managed successful defense of client’s product against a patent infringement claim on biosimilar pharmaceutical, leading to a summary judgment ruling by the district court that the product did not infringed as well as representing during the appeal to the Federal Circuit, which affirmed the district court’s finding of non-infringement.
In the Matter of Certain Non-invasive Aesthetic Body-contouring Devices, Components Thereof, and Methods Using Same (USITC): Represented a pharmaceutical company and its affiliates in a Section 337 investigation involving patents related to abdomen sculpting. In 2021, the investigation was terminated in view of a settlement agreement.
Confidential Arbitrations for Major Biopharmaceutical Company (AAA Arbitration): Successfully defended Biopharmaceutical Company in commercial arbitrations over contracts relating to innovative drug compounds, and served as second chair counsel at arbitration hearing. Obtained complete victory for client.
Signify Holding B.V., et al. v. Lighting Science Group Corp. (USPTO): Led team representing Lighting Science Group defending against instituted inter partes review petition relating to client’s LED lightbulb patent.
W. Norman Scott, et al. v. Zimmer, Inc., et al., (D. Del.): Represented defendants in correction of inventorship case where prominent orthopedic surgeons sought to correct inventorship on three patents related to knee prostheses. Handled significant responsibilities throughout the litigation in developing and executing client's defenses, ultimately leading to a complete victory before the district court. Also provided extensive discovery and strategic assistance with related confidential arbitrations.
Ericsson Inc., et al. v. Samsung Electronics Co., Ltd., et al. (E.D. Tex.): Represented defendants in three patent infringement cases related to cellular communications technology.
Mark IV Industrial Corp v. TransCore Holdings, Inc., et al., (D. Del.): Represented plaintiff in an infringement case involving four patents relating to automatic vehicle identification systems and open-road tolling.
Clerk & Government Experience
ClerkHonorable Janis L. SammartinoUnited States District Court for the Southern District of CaliforniaSeptember 2008–August 2010
Prior Experience
Summer Associate, Kirkland & Ellis LLP, 2007
Hamilton Sundstrand Corp.: Application Developer (2000–2005), designed, managed, and developed information technology projects.
More
Thought Leadership
Publications
Your Opinion Really Does Not Matter: How The Use Of Referenda In Funding Public University Student Groups Violates Constitutional Free Speech Principles, 83 Notre Dame Law Review 845 (2008).
Credentials
Admissions & Qualifications
- 2008, Illinois
- Registered to practice before the United States Patent and Trademark Office
Courts
- United States Court of Appeals for the Federal Circuit
- United States Court of Appeals for the Seventh Circuit
- United States District Court for the Northern District of Illinois
Education
- Notre Dame Law SchoolJ.D.magna cum laude2008Article Editor, Notre Dame Law Review
- Carnegie Mellon UniversityM.S., Electronic Commerce2003
- Wheaton CollegeB.S., Computer Sciencecum laude2000