Joseph M. Casino

Partner

Joseph M. Casino
Partner
office New York
phone 212-551-2842
fax212-490-0536
emailjcasino@wiggin.com
view LinkedIn profile


Biography

Joe's 20+ year career is highlighted by his work as lead counsel in hard-fought patent litigations throughout the US and in Patent Office proceedings. As the leader of Wiggin and Dana's Intellectual Property Practice Group, he advises clients on patent office disputes, complex licensing, patent monetization, patent portfolio development, and worldwide intellectual property strategic matters.

Joe's keen understanding of technology has made him a valuable resource for clients facing the most complex IP challenges. His experience includes over 150 patent cases in a variety of high tech fields, including consumer tech, electronics, aerospace, computers, hybrid electric vehicles, semiconductors, smart phones, medical devices, and batteries. Examples include Lufthansa Technik AG v. Astronics Advanced Electronic Systems Corp., Case No. 2:14-CV-1821 (W.D. Wash.), an avionics industry case where Joe led the patent team to a successful claim construction and summary judgment of patent indefiniteness, which was affirmed on appeal; and Therasense, Inc. v. Becton, Dickinson and Co., Case No. 3:05-CV 3117 (N.D. Calif.), a medical-device case where Joe's client obtained a successful summary judgment on one patent and a verdict of invalidity/inequitable conduct on a second patent, including an award of attorneys' fees, setting the current standards for inequitable conduct through an en banc appeal.

His knowledge spans all aspects of IP law, including litigation, licensing, opinions, and prosecution. His work has earned him industry recognition, being named one of the world's leading IP strategists by IAM Strategy 300, as well as Super Lawyer honors. Joe has been the lead negotiator for license and cross-license discussions involving some of the largest patent portfolios. Joe is currently active in the Licensing Executive Society Standard Program for developing an ANSI standard of best practices for licensing negotiations.

Joe has authored dozens of articles and papers on IP and patent law. He has also lectured extensively on topics such as patent eligibility, inter parties review, patent exhaustion, drafting patent license agreements, damages and risk analysis, claim construction, and the doctrine of equivalents.

Joe received his J.D. cum laude from Brooklyn Law School, where he was an editor for the Brooklyn Journal of International Law and received various academic awards. He earned a B.S. cum laude in computer science from Brooklyn College.

Joe also has a keen interest in promoting diversity. He serves as the Vice Chair of the Board of Directors for the Council for Unity, a unique charity that promotes diversity and conflict resolution through bringing together students of all cultures.

Experience

  • Lufthansa Technik AG v. Astronics Advanced Electronic Systems Corp., Case No. 2:14-CV-1821, Western District of Washington. In this avionics industry case, Joe's client obtained a successful claim construction and summary judgment of patent indefiniteness.
  • Genovis AB et al. v. Promega Corp., Case No. 3:15-CV-00206, Western District of Wisconsin. In this biotech case, Joe's client asserted its key patent against a competitor ending a hard found litigation with a beneficial settlement.
  • Therasense, Inc. v. Becton, Dickinson and Co., Case No. 3:05-CV 3117, Northern District of California. In this medical device case, Joe's client obtained a successful summary judgment on one patent and a verdict of invalidity/inequitable conduct on a second patent, including an award of attorneys' fees. The current standards for inequitable conduct were established in the en banc decision by the Federal Circuit in this case.
  • Roche Diagnostic Operations, Inc. et al. v. Bayer Corporation et al., Civil Action No. 07-753-JJF. This suit was filed in the District of Delaware and involved blood glucose meters and test strips. Joe's client successfully moved to have the matter resolved in arbitration.
  • Matsushita Electric Industrial Co., Ltd. et al. v. Inverness Medical Technologies, Inc. et al., Civil Action No.: 00-143-SLR. This case was filed in the District of Delaware and involved medical devices. Joe represented the patentee and the case concluded when the alleged infringer agreed to stop production of its generic product.
  • Matsushita Battery Industrial Co., Ltd. et al. v. Energy Conversion Devices, Inc. et al., Civil Action No.: 96-101-SLR. Joe's client filed a declaratory judgment action in the District of Delaware. The matter was resolved when the patentee agreed to a covenant not to sue.
  • Eveready Corporation v. Matsushita Electric Industrial Co., Ltd. et al., Civil Action No.: 1:01CV877, filed in the Northern District of Ohio. The case settled after the patent-in-suit was challenged by Joe's client on the ground of inequitable conduct.
  • Ovonic Battery Co. et al. v. Matsushita Electric Industrial, Co. Ltd. et al., International Chamber of Commerce. After a three-week arbitration, a comprehensive settlement was achieved for Joe's client.
  • International Control Systems, L.L.C. v. Matsushita Electric Industrial Co., Ltd. et al., Civil Action No. 3:00 CV 00537, filed in the District of Connecticut. After Joe's client pressed for Rule 11 sanctions, the Plaintiff withdrew the case in its entirety.
  • Typhoon Touch Technologies, Inc. v. Nova Mobility Systems, Inc. et al., Civil Action No. 6:07cv546, Eastern District of Texas. Joe pursued a successful Markman strategy that resulted in a stipulation of non-infringement and successful appeal.
  • Sony Electronics, Inc. et al. v. Soundview Technologies, Inc., Case No.: 3:00-CV-754, District of Connecticut. Joe's client filed summary judgment of non-infringement, and was successful before the district court and was affirmed by the Federal Circuit.
  • In Re Compression Labs, Inc. Patent Litigation, Case No. MDL 05-01654, Eastern District of Texas. Joe pursued a transfer strategy that resulted in one of the first cases involving a non-practicing entity that was transferred out of the Eastern District of Texas. Joe's team developed the key prior art defense for the group and took the lead at depositions dealing with prior art and inequitable conduct defenses. Based on the prior art defense and a successful Markman hearing, the case was successfully resolved.
  • Technology Licensing Corporation v. JVC Americas Corporation, Civ. Action No. 1:12-cv-1444, Northern District of Illinois. Joe's client moved for summary judgment on the ground of non-infringement due to license and was successful. The plaintiff did not appeal.
  • e.Digital Corporation v. JVC Kenwood Corporation et al., Case No. 3:13-cv-00356, Southern District of California. Joe's client moved for collateral estoppel on claim construction, which eliminated two patents from the case before any discovery was allowed. Thereafter, the matter was quickly resolved by settlement.
  • Optimum Power Solutions, LLC v. Panasonic Corporation of North America, Case No. 3:12-cv-03123 SI, Northern District of California. Joe's client moved for summary judgment of non-infringement, which was granted and affirmed on appeal.
  • Joe has settled cross-license negotiations in the telecommunication area over billions of dollars in sales without litigation.
  • Joe has settled cross-license negotiations in the electronics area over billions of dollars in sales without litigation.
  • After the supplier to Joe's client lost a patent case and then went bankrupt without any prior notice to Joe's client, he successfully negotiated with the patentee in Texas and bankruptcy trustee in Singapore within a tight timeline to make sure our client's supply of an essential component was uninterrupted.
  • In an International Trade Commission case relating to noise-canceling headphones brought by Bose Corporation against Panasonic and others, the matter was resolved without any monetary contribution by Joe's client.

Recognitions

  • Named as one of the world's-leading IP Strategists in the 2017 edition of the IAM Strategy 300 - The World's Leading IP Strategists
  • Named as Super Lawyer, 2013-2014 (for more about the standards of inclusion in Super Lawyers, please click here)

Memberships

  • New York Intellectual Property Association
  • Federal Circuit Bar Association
  • New York State Bar Association
  • Council for Unity
  • Licensing Executives Society

Advisories

03.12.2018Recent Developments in Intellectual Property Law
12.15.2017Intellectual Property Group Practice Update & Recent Happenings
06.01.2017U.S. Supreme Court Broadens the Patent Exhaustion Doctrine in Impression Products v. Lexmark Int'l, Inc.
05.22.2017Supreme Court Drastically Limits Venue for Patent Cases
03.23.2017U.S. Supreme Court Eliminates Defense of Laches In Patent Infringement Cases
02.28.2017Extraterritoriality of United States Patent Laws: Limited Infringement Liability
01.24.2017The Year In Intellectual Property: A Look Back at 2016 and a Look Ahead to 2017
12.06.2016Supreme Court Decision Regarding Damages for Design Patent Infringement
06.29.2016Busy Supreme Court Docket in Intellectual Property Highlighted by Cases on Enhanced Damages, Attorney's Fees, Claim Construction Standard in IPRs, and Extraterritoriality
06.27.2016The Impact of the Brexit on Intellectual Property Rights in Europe
01.29.2016Intellectual Property 2015 Year In Review
03.03.2015IEEE Clarifies Obligations When Licensing Standards-Essential Patents
03.03.2015Patent Exhaustion Update: The Federal Circuit Allows Royalties From Different Entities in Supply Chain
01.22.2015Supreme Court Changes Appellate Review Standard for Claim Construction
01.12.2015Intellectual Property 2014 Year in Review
12.17.2014In Ericsson v. D-Link The Federal Circuit Provides Guidance on Damages for Standard Essential Patents
06.20.2014Abstract Ideas Require Something More than Implementation on Generic Computer to be Patent Eligible
04.14.2014Licensing In the European Union: The European Commission Adopts New Regulations and Guidelines for Applying EU Competition Law To Technology Transfer Agreements

Published Works

09.19.2017Patent Litigation: Mapping a Global Strategy (2017 Update) Practical Law US - Thomson Reuters
08.09.2016What Courts Are Saying About Software Patents Post-EnfishLaw360
09.14.2015The Changed Rules of the Game in the Patent Litigation Arena TerraLex Connections
06.01.2015The Rules of the Game Have Changed in Patent LitigationNew York Law Journal, Complex Litigation Section
04.20.2015Patent Litigation Reform on the Horizon?Connecticut Law Tribune
09.30.2014Lessons from 2 Years of AIA Post-Grant ProceedingsLaw360, New York
09.29.2014Trends from 2 Years of AIA Post-Grant ProceedingsLaw360, New York
06.13.2014Patent Portfolio Valuation: A Lawyer's PerspectiveBNA's Patent, Trademark & Copyright Journal
11.06.2013Lessons from the 1st Year of Post-Grant ProceedingsLaw360
12.01.2012Patent Litigation: Mapping a Global Strategy "Practice Note"PracticalLaw.com
11.02.2012Monetization of a Firm's Patent Rights: A Lawyer's PerspectiveBloomberg BNA, BNA's Patent, Trademark & Copyright Journal, 85 PTCJ 22
11.01.2012Global Patent Litigation: Mapping Your StrategyPractical Law Company IP & Technology Magazine
10.10.2012Injunctions for FRAND-Licensed Patents: Debate ContinuesLaw 360, Competition Law360, Appellate Law360, New York
09.01.2011Implications of Post-Seagate Cases Finding Willful InfringementNYIPLA Bulletin, August/September, 2011
01.13.2011CAFC rejects the 25% Rule of Thumb as a Fundamentally Flawed Toll in Reasonable Royalty Calculation (available only in Japanese) Nikkei IP Awareness (published in Japanese only)
12.01.2010Federal Courts Closely Scrutinizing and Slashing Patent Damage Awards2010 Patently-O Patent L.J. 24
05.26.2010The Impact of American Needle on IP And ContractsIP Law360
04.26.2010Increase of False Patent Making Litigation (available only in Japanese)Nikkei BP Chizai Awareness (published in Japanese)
03.31.2010Update to Recent Patent Damages ArticlePatently-O Guest Blog, Guest Post
10.15.2008Transferring Cases out of Eastern Dist. of TexasIP Law360
07.10.2008High Court Sets Patent Exhaustion Law Back on TrackIP Law360
01.16.2008Will The High Court Clarify The Exhaustion Doctrine?IP Law 360
05.14.2007In re Seagate Technology: Wilfulness and Waiver, a Summary and a ProposalPatently-O Patent L.J. 1

office New York
phone 212-551-2842
fax212-490-0536
emailjcasino@wiggin.com
view LinkedIn profile

PRACTICE GROUPS

EDUCATION

  • Brooklyn Law School, J.D., 1996, cum laude
  • Brooklyn College, B.S., 1991, cum laude

BAR ADMISSIONS

  • New York
  • U.S. Patent and Trademark Office

COURT ADMISSIONS

  • Registered to practice before US Patent and Trademark Office
  • State of New York
  • US Court of Appeals for the Federal Circuit
  • US District Court (District of Connecticut)
  • US District Court (Eastern District of New York)
  • US District Court (Southern District of New York)
  • US Supreme Court


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