Jordana A. Garellek

Associate

  • Jordana A. Garellek
  • Phone: +1 212 471 1829

    Import to Address Book

  • Duane Morris LLP
    1540 Broadway
    New York, NY 10036-4086
    USA

Jordana A. Garellek practices in the area of intellectual property. Ms. Garellek has experience in IP litigation, including patent, trademark, copyright and trade secret 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, lead acid batteries 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

    Intellectual Property Matters

  • Obtained settlement on behalf of defendant RFID system manufacturer in a trade secret litigation in the U.S. District Court for the District of Arizona relating to wireless incontinence detection system.

  • Represented defendant flood insurance company in the U.S. District Court for the District of Nevada in a trade secret litigation relating to flood insurance claim software.

  • Obtained summary judgment of noninfringement in the District of Delaware for Defendants CenturyTel Broadband Services, LLC and Qwest Corporation (now Lumen Technologies, Inc. and formerly CenturyLink, Inc.) in a patent litigation related to Defendants’ ADSL systems.

  • Obtained a dismissal with prejudice of a patent infringement case in the U.S. District Court for the Southern District of Mississippi on behalf of Mississippi Power Company on the basis that all claims of an automatic bill payment system patent were invalid as being directed toward patent-ineligible subject matter.

  • 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.

  • Successfully prosecuted patent on behalf of client directed to features of a digital music streaming service application.

  • Ultravision Technologies, LLC v. Lamar Advertising Company, American Lighting Technologies, Inc., and Irvin International, Inc., (E.D. Tex.). Represented Defendant Lighting Technologies, Inc. and Irvin Int’l, Inc. in an action involving claims for infringement of five patents, misappropriation of trade secrets and various state law claims in connection with the manufacture and sale of LED-based billboard lighting systems.
  • 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.
  • Jazz Pharmaceuticals, Inc. et al. v. Wockhardt Bio AG et al., 2:15-cv-5619 (D.N.J. 2015). Obtained settlement for defendant Wockhardt Bio AG in a patent litigation matter relating to Jazz Pharmaceutical's treatment for narcolepsy, Xyrem.
  • 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.

  • Drafted and successfully prosecuted a patent for orthopedic and orthotic braces and supports.

  • 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.

  • FashionCraft-Excello, Inc. v. CheapFavorShop.com, WeddingFavors.org, CustomGift.com, BabyFavors.com, Outdoor Living, Inc., a.k.a. OutdoorLiving.com, Wish Rocket, LLC and Ronald G. Spinks Jr., Case No. 1:16-cv-00381-PKC-RER (E.D.N.Y. 2016). Represented FashionCraft-Excello in an action involving trademark infringement, copyright infringement, false designation of goods, false advertising, unjust enrichment, deceptive acts and business practices, deception and confusion of consumers, and damage to FashionCraft-Excello's reputation and goodwill in connection with the marketing and sale of wedding and event favors and gifts.

  • Obtained a dismissal with prejudice in a patent infringement case in the U.S. District Court for the Eastern District of Texas on behalf of Epsilon Data Management, LLC, a subsidiary of Alliance Data Systems Corp., in which plaintiffs Rpost Holdings, Inc., Rpost Communications Ltd., and Rmail Ltd. asserted patents directed to verifying delivery and integrity of electronic messages; this case was consolidated with cases against defendants Experian Marketing Solutions, Inc. and Vocus, Inc.

    • Land-Use Matters

  • 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 an application for the variance of existing zoning regulations to permit a residential subdivision of waterfront property in the Hammond Cove area of the Bronx.

  • Represented a large NGO in obtaining special zoning approvals for security upgrade and physical plant renovation.

  • 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.

  • Analyzed for lending institution three substandard residential buildings on Central Park West in Manhattan for zoning insufficiencies, noncompliances and major violations.

  • 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.

  • Analyzed zoning compliance for proposed acquisition of mission building for Thailand government.

  • 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
  • District of Columbia
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Patent and Trademark Office (USPTO)
  • U.S. District Court for the District of New Jersey
  • U.S. District Court for the Eastern District of New York
  • U.S. District Court for the Southern District of New York
  • U.S. District Court for the Eastern District of Texas

Education

  • Fordham University School of Law, J.D., cum laude, 2012
    - Fordham Intellectual Property, Media and Entertainment Law Journal
    - The Henrietta Metcalf Prize in Contracts
  • William E. Macaulay Honors College at Brooklyn College, B.S., summa cum laude, 2009
    - Phi Beta Kappa

Experience

  • Duane Morris LLP
    - Associate, 2012-present
    - Summer Associate, 2011
  • Kings County District Attorney's Office, Domestic Violence Bureau
    - Legal Intern, 2010

Honors and Awards

  • Listed in New York Metro Super Lawyers

Professional Activities

  • Editorial Review Board for the Food and Drug Law Journal Vol. 78, Issue 3, 2023

Selected Publications

Selected Speaking Engagements

  • Presenter, "New Rules of Professional Conduct Before the PTO," Duane Morris LLP, New York City, June 13, 2013
  • Panelist, "The 10 Secrets About Law School," Macaulay Honors College, New York City, April 29, 2013