Exhibit 1 

 

Case: 1:20-cv-04806 Document #: 377-1 Filed: 08/23/21 Page 1 of 4 PageID #:8562
JIM GANDY

Address: 5961 Spikerush Trail, Southport, NC 28461 Telephone No.: (910) 599-1329

QUALIFICATIONS

• Broad legal and technical background in examining design patent applications with more than 32 

years experience at the United States Patent and Trademark Office, (USPTO). 

• Expert knowledge of design patent examination practice and procedure and the application of 

statutes, rules and relevant case law for determining patentability of a claim in design patent 

applications. 

• Extensive speaking experience on behalf of the USPTO regarding the filing and examination of 

design patent applications to various audiences such as the American Intellectual Property Law 

Association, Independent Inventors Conference and the Visiting Scholars program.

• I am currently a registered patent agent with the USPTO specializing in the field of design patents.

EDUCATION

Bachelor of Science in Architectural Design Technology, 1972 Temple 

University, Philadelphia, PA.

PROFESSIONAL EXPERIENCE

USPTO 

Design Patent Practice Specialist, Technology Center 2900, USPTO, 1998-2005

• As the design patent practice specialist, I was in charge of all training for new and junior examiners 

as well as continuing education training for all examiners in Technology Center 2900. I was also in 

charge of making updates to Chapter 1500 Design Patents of the Manual of Patent Examining 

Procedure as well as the Design Examiner Supplemental Training Guide. 

• I also responded to inquiries about design patent practice and procedure and filing design patent 

applications from external customers on a daily basis. In my capacity as the practice specialist, I 

reviewed all cases coming back from the Courts, the Board of Patent Appeals and Interferences and 

the Office of Patent Quality Review for learning points and corrective action if necessary. 

• I monitored all reissue and reexamination applications filed in the technology center and reviewed 

Office actions prepared by examiners for technical accuracy under the Office’s in–process review 

program. In addition, I would make presentations to attorneys and inventor groups on behalf of the 

USPTO to share information and learn from each other.

Supervisory Patent Examiner, Art Unit 2913, USPTO, 1996-1998

• In my capacity as supervisor, I was in charge of distributing and monitoring the flow of work for 

examiners in the art unit as well as reviewing the overall quality and timeliness of the work product 

performed by examiners. 

• It was also my responsibility to train junior examiners on practice and procedure for examining 

design patent applications, including the proper application of the statutes and rules. In addition, I 

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would provide refresher training to primary examiners when necessary to assure consistency of the 

work product. 

• As supervisor I was responsible for evaluating and rating all examiners in the art unit at the end of the 

fiscal year based on the criteria for the elements under their performance appraisal plan. I was also in 

charge of the program for uniformity of examination practice for the entire Design Patent 

Technology Center. In that capacity I was responsible for the development of the Design Examiner 

Supplemental Training Guide.

Design Patent Examiner, Art Unit 2911, USPTO, 1972-1996

• As an examiner I worked primarily in class D12, "Transportation". In 1979 I was promoted to 

primary examiner and granted full signatory authority. I have experience in initiating interference 

proceedings, preparing examiner's answers for applications on appeal to the Board of Patent Appeals 

and Interferences and have examined both reexamination and reissue applications. 

• As a primary examiner I trained new examiners and occasionally assumed supervisory patent 

examiner duties in the absence of the art unit supervisor. In my 24 years as an examiner, I made 

patentability determinations in over 10,000 design patent applications examined.

Design Patent Consultant 

Since retiring from the USPTO I have on occasion counseled patent attorneys and agents in 

their filings of design patent applications at the United States Patent and Trademark Office. I have 

also prepared expert reports and testified in a deposition and at trial as an expert witness in the 

following matters:

• Complaint of Ford Global Technologies, LLC under Section 337 of The Tariff Act of 1930, 

o Prepared expert report on sufficiency of disclosure of claim under 35 USC § 112, Re U.S. 

Design Patent Nos. D498,444, D500,717, D500,969, D500,970, D501,162, D508,223, 

D510,551 and D539,448 (2008).

• Magnadyne Corp. vs. Best Buy Co., Inc.

o Prepared expert report on infringement of U.S. Design Patent No. D522,457 and lack of 

anticipation or obviousness under 35 USC § 102 and 103(a) respectively, (2010).

o Gave deposition on expert report, (2010).

• Weber-Stephen Products LLC v. Sears Holdings Corporation

o Prepared expert report on invalidity of U.S. Design Patent Nos. D564,834 and D609,045 as 

being obvious under 35 USC § 103(a) – (D564,834), and nonenabling and indefinite under 

35 USC § 112(a) and (b) and failing to comply with the written description requirement of 

35 USC § 112(a) – D564,834 and D609,045, (2015).

o Prepared expert report on non-infringement of U.S. Design Patent Nos. D564,834 and 

D609,045, (2015).

o Gave deposition on expert reports, (2015).

• Trinity Manufacturing, L.L.C.; Campbell Soup Company; and Campbell Sales Company v. Gamon 

Plus, Inc.

o Prepared Declaration in support of a Petition for Inter Partes Review of U.S. Design Patent 

Nos. D595,074, D621,644, D621,645 and D621,646, (2016).

o Prepared Supplemental Declaration in support of Petitioner’s Reply to Patent Owner’s 

Merits Response and Declaration and Supplemental Declaration of Terry Johnson for the 

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Inter Partes review of U.S. Design Patent Nos. D621,645 and D612,646, IPR2017-00091 

and IPR2017-00094 respectively, (2017).

o Gave deposition on Supplemental Declaration, (2017).

• Nite Glow Industries, Inc., I Did It, Inc., and Marni Markell Hurwitz v. Central Garden & Pet 

Company and Four Paws Pet Company, d/b/a Four Paws Products, LTD.

o Prepared expert report on design patent practice regarding the filing of a request for 

expedited examination under 37 CFR 1.155 and its availability to design patent 

applications on certain flea and tick dispensers and cartridges identified in the report,

(2016).

o Gave deposition on expert report, (2017).

o Testified on expert report at trial, (2018).

• LKQ Corporation and Keystone Automotive Industries, Inc. v. GM Global Technology Operations 

LLC.

o Prepared Declaration in support of a Petition for Inter Partes and Post Grant Review of 

U.S. Design Patent Nos. D823,741, D797,625, D813,759, D855,508 and D864,065, (2019 

– 2020).

AWARDS

• Received outstanding rating at the end of fiscal year under performance appraisal plan both as an 

examiner, supervisor patent examiner and design patent practice specialist for 32 consecutive years.

• Received Department of Commerce Bronze Medal Award in March of 1983 for outstanding 

competence in the performance of official duties in the design patent field over a long period of 

time.

• Received Distinguished Career Award from the Patent and Trademark Office in December 2000, for 

sustained superior performance in the examination of design patent applications and in the leadership 

of art units.

• Received Norman P. Morgenstern Award in June of 2004 for recognition of the Supervisory Patent 

Examiner whose work exemplifies bold leadership and innovative activities that make a significant 

contribution to the U.S. Patent and Trademark Office.

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