Craig A. Gelfound

Arent Fox LLP

Los Angeles, San Francisco

Patent litigation, portfolio management

Since 2012, Gelfound has been responsible for prosecuting a major portion of Qualcomm Inc.'s patent portfolio -- a job the semiconductor and telecommunications equipment company once handled exclusively with its in-house counsel.

He has four or five attorneys working full-time for the company writing patent applications and responding to actions by the U.S. Patent and Trademark Office.

Gelfound, the head of Arent Fox LLP's intellectual property group, said the number of Qualcomm patents has increased in recent years, and the firm has hired three associates this year. Half of their time is devoted to the San Diego-based company's work.

He expressed enthusiasm both for his work with Qualcomm and with smaller companies.

"Even after 25 years, it's still exciting, especially when you go into a new company," Gelfound said. "We deal with incredibly smart people on the innovative side."

He has been working with client Divergent Technologies Inc., a company that makes 3-D printed automobile technology, everything from the tires to the transmission. While helping the company develop a patent portfolio, he now focuses on licensing strategy.

While many inventions must be patented, Gelfound said he often advises companies when to avoid patents and to keep valuable intellectual property as trade secrets.

Patents are very valuable, but they also require a company to disclose its invention. As a result, he must advise the company on the pros and cons, he said.

"Is it detectable if my competitor does it? Can the competitor reverse engineer it? You make a recommendation on what the best way is to protect it," Gelfound said of some trade secrets that might not be worth patenting because it would be impossible to prove infringement.

Despite his import he places on patent expertise, Gelfound also said it's important for intellectual property lawyers to think more like generalists when advising companies.

"I want to build value for the company in the most cost-effective way while maximizing return on investment," he said. "You need someone who can look at the big picture."

Gelfound advises Munchkin Inc., a Van Nuys-based baby and personal products company, which was hit with a patent infringement lawsuit over refill cassettes in its diaper pails.

He was not a litigator in the case, but recommended the company file for summary judgment.

Lathrop Gage LLP attorneys filed the motion, which was granted last fall by U.S. District Judge Philip S. Gutierrez of Los Angeles. Edgewell Personal Care Brands LLC v. Munchkin Inc., 18-CV03005 (C.D. Cal., filed April 10, 2018).

-- Craig Anderson