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Joeโs 25+ 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 Danaโs Intellectual Property Practice Group, he advises clients on patent office disputes, complex licensing, patent monetization, patent portfolio development, and worldwide intellectual property strategic matters.
Joeโs keen understanding of technology has made him a valuable resource for clients facing the most complex IP challenges. His experience includes hundreds of IP 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 Joeโs client obtained a successful summary judgment on one patent and a verdict of invalidity/inequitable conduct on a second patent, including an award of attorneysโ fees, setting the current standards for inequitable conduct through an en banc appeal. Joe has also litigated the tough issue of patent eligibility successfully for patentees, e.g., RideShare Displays, Inc. v. Lyft, Inc., Case No. 1:20-cv-01629-RGA-JLH (D.Del.) and for accused infringers, e.g., Burnett v. Panasonic Corporation et al., 18-1234-CT (Fed. Cir.).
His knowledge spans all aspects of IP law, including litigation, licensing, opinions, and prosecution. His work has earned him industry recognition, being consistently named as one of the worldโs 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 was appointed to the leadership position of Senior Vice President for the Licensing Executives Society standard-setting program for developing ANSI standards for best practices on a wide range of intellectual property issues.
Joe has authored dozens of articles and papers on IP and patent law. He has also lectured extensively on topics such as trade secrets, 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 has a long-standing interest in promoting diversity. He serves as the 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.
Education
- Brooklyn Law School (J.D., 1996)
- cum laude
- Brooklyn College (B.S., 1991)
- cum laude
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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, firm client Astronicsobtained 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, firm client Genovis 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, a successful summary judgment on one patent and a verdict of invalidity/inequitable conduct on a second patent was obtained on behalf of Bayer Corporation, including an award of attorneysโ fees. The current standards for inequitable conduct were established in theย en bancdecision 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. Bayer 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. Our team represented the patentee (Panasonic) 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. Panasonic filedย 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 our 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 our 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 our team 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. We pursued a successfulย Markmanstrategy 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. We filed summary judgment of non-infringement,ย 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. We 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. Our 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. Firm client JVC moved for summary judgment on the ground of non-infringement due to license and was successful. The plaintiff did not appeal.
- Digital Corporation v. JVC Kenwood Corporation et al., Case No. 3:13-cv-00356, Southern District of California. Firm client JVC 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. Our client moved for summary judgment of non-infringement, which was granted and affirmed on appeal.
- Our team has settled cross-license negotiations in the telecommunication area over billions of dollars in sales without litigation.
- Our team has settled cross-license negotiations in the electronics area over billions of dollars in sales without litigation.
- After the supplier to our client lost a patent case and then went bankrupt without any prior notice to our client, we successfully negotiated with the patentee in Texas and bankruptcy trustee in Singapore within a tight timeline to make sure our clientโs 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 Panasonic.
- Carl M. Burnett v. Panasonic Corp. et al, Case No.8:17-cv-00236-PX, District of Maryland.ย Our client successfully won a motion to dismiss on the elusive issue of patentability under 35 U.S.C. 101 which was upheld by the Federal Circuit after it had decidedย Berkheimer, which toughened the standard for prevailing on such strategy.
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