`
`Jim Gandy
`
`5961 Spikerush Trail
`Southport, NC 28461
`
`
`
`Telephone No.: (910) 599-1329
`
`email: gandy_2@msn.com
`________________________________________________________________
`
`Design Patent Consultant
`
`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.
`
`Bachelor of Science in Architectural Design Technology, 1972
`Temple University, Philadelphia, PA.
`
`EDUCATION
`
`PROFESSIONAL EXPERIENCE
`
`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.
`
`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
`
`LKQ - Ex. 1014 p. 1
`
`

`

`examining design patent applications, including the proper application of
`the statutes and rules. In addition, I 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 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.
`
`
`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, As Amended
`
`
`• 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.
`
`
`• 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).
`
` •
`
` Gave deposition on expert report, (2010).
`
`
` Weber-Stephen Products LLC v. Sears Holdings Corporation
`
`
`• 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)
`
`LKQ - Ex. 1014 p. 2
`
`

`

`and (b) and failing to comply with the written description requirement
`of 35 USC § 112(a) – D564,834 and D609,045, (2015).
`
`• Prepared expert report on non-infringement of U.S. Design Patent
`Nos. D564,834 and D609,045, (2015).
`
`• Gave deposition on expert reports, (2015).
`
`
` Trinity Manufacturing, L.L.C.; Campbell Soup Company; and Campbell Sales
` Company v. Gamon Plus, Inc.
`
`
`• 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).
`
` •
`
` 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 Inter Partes review of U.S.
`Design Patent Nos. D621,645 and D621,646, IPR2017-00091 and
`IPR2017-00094 respectively, (2017).
`
`
`
`• 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.
`
`• 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).
`
` •
`
` Gave deposition on expert report, (2017).
`
` •
`
` Testified on expert report at trial, (2018).
`
`
`
`
`
`
`
`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.
`
`LKQ - Ex. 1014 p. 3
`
`