Craig A. Gelfound

Gelfound considers patent preparation and patent litigation complementary components to becoming a good intellectual property attorney.

“If you’ve prepared patent applications, you’ll be a better litigator because you’ll know how to attack those patents better,” Gelfound explained. “If you litigate, you’ll be a much better at preparing patents because you’ll understand the challenges in court better.”

On the litigation end, Gelfound has been lead counsel in defending Bridgelux Inc. Everlight Electronics Co. Ltd. v. Bridgelux Inc., 17-CV03363 (N.D. Cal., filed June 10, 2017). Taiwan-based Everlight sued Bridgelux for infringement in 2017, and because Gelfound had managed the company’s entire patent portfolio, he was best situated to defend it. The case settled in December.

Gelfound was recently retained by Providence St. Joseph Health, an $18 billion healthcare system, which has asked him to provide IP counseling to its digital innovation group.

But the former engineer truly thrives when he’s looking at hardware because, Gelfound said, he understands both the technology and the legal hurdles that technology has to clear.

That dual expertise landed him a gig with SanDisk LLC, which develops flash memory solutions. In 2016, the company was acquired by one of Gelfound’s longtime clients, Western Digital Corp. Executives from Western Digital asked him to assist with the development and maintenance of the acquired company’s patent portfolio.

“This is exciting technology and right up my alley,” Gelfound said. “When I was an engineer, I used to design transistors and chips so I can look at a circuit board and understand it.”

Once he has a handle on the technology or the patent of any company, the next step is return on investment, Gelfound said. To a patent attorney, he said, that means knowing how to monetize and license in a constantly evolving legal landscape.

“Technology often advances quickly and the legal world just can’t keep up,” Gelfound said. “You’re always looking at different strategies while you wait for the law to catch up.”

— Paula Lehman-Ewing