Wiggin and Dana LLP

Intellectual Property, Intellectual Property Litigation, Corporate, Blockchain and Digital Assets, Inter Partes Review and Post Grant Review, Litigation and Regulatory Compliance, Standard Essential Patent Licensing and Litigation Group, Trade Secrets

Partner

Joe’s 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 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 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 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. 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 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 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.

Litigation Counsel of America Fellow New York Intellectual Property Association Federal Circuit Bar Association New York State Bar Association Council for Unity Licensing Executives Society

Brooklyn Law School (J.D.) cum laude Brooklyn College (B.S.) cum laude