Joseph F. MarinelliPartner

Fitch Even partner Joseph F. Marinelli has over 20 years of experience litigating complex patent, trade secrets, and trademark cases in a variety of industries including consumer electronics, financial products and services, and medical devices. He has honed his trial skills through extensive experience in popular patent venues including the Eastern and Western Districts of Texas, the Northern District of Illinois, the Northern District of California, and the Western District of Wisconsin.

Additionally, Joe provides counsel on intellectual property portfolio management and transactions, including structuring and negotiating IP licenses, standard-essential patents, joint ventures, and technology agreements. He advises clients across a broad spectrum of technologies, including liquid crystal displays, DRAM microprocessors, media players GUIs, lithium ion batteries, medical devices, pharmaceuticals, polyethylene films, food ingredients, garage door openers, and banking systems. In addition to his trial work, Joe regularly counsels clients on patent infringement avoidance, which often involves providing validity opinions.

Joe has handled appeals to the U.S. Court of Appeals for the Federal Circuit and the Seventh Circuit and has unique experience in successfully representing clients in post-grant proceedings in the U.S. Patent and Trademark Office under the America Invents Act.

While attending the University of Wisconsin Law School, Joe interned for the Honorable Barbara B. Crabb, U.S. District Court for the Western District of Wisconsin.

Lone Star Silicon Innovations LLC v. Nanya Technology Corporation (N.D. Cal. 2016–20). Currently representing plaintiff in patent infringement action against Nanya Technology Corporation under multiple patents related to DRAM and NAND Flash memory and other large-scale integrated semiconductor devices. Actions against Micron, Toshiba, United Microelectronics Corporation, Renesas Electronics, Semiconductor Manufacturing International Corporation, and STMicroelectronics were resolved.

Google Inc. and Apple Inc. v. ContentGuard Holdings, Inc. (PTAB 2015). Integral member of team representing ContentGuard in 35 IPR and CBM proceedings filed against its digital rights management patent portfolio. Five proceedings dismissed voluntarily. After submission of patent owner preliminary responses, obtained PTAB decisions denying institution of trial in all but one remaining proceeding.

Safeway, Inc. and The Kroger Co. v. Kroy IP Holdings, LLC (PTAB 2014). Member of team representing Kroy IP Holdings in IPR proceeding filed against its digital incentive program patent, U.S. 7,054,830. After submitting patent owner preliminary response, obtained PTAB decision denying institution of trial.

Alexsam, Inc. v. Best Buy LP et al. (E.D. Tex. 2013) Obtained a successful jury verdict upholding the validity and enforceability of two patents relating to computer systems for activating retail gift cards. Following a one-week trial, the jury rejected defenses asserted by seven industry-leading retailers based on novelty, inventorship, and inequitable conduct.

Alexsam, Inc. v. Barnes & Noble, Inc. (E.D. Tex. 2013) Represented the plaintiff in a one-week patent infringement jury trial involving patents relating to computer systems for activating retail gift cards.

Alexsam v. The Gap, Inc. (E.D. Tex. 2013) Represented the plaintiff in a one-week patent infringement jury trial involving patents relating to computer systems for activating retail gift cards.

Alexsam, Inc. v. NetSpend Corp. (Travis County Dist. Ct., Tex. 2007). Represented the plaintiff in enforcement of a patent license agreement involving point-of-sale activation and funding systems for prepaid debit cards and gift cards, in a trial that resulted in winning a jury verdict of $18 million.

Alexsam, Inc. v. Pier 1 Imports, Inc. et al. (E.D. Tex. 2011). Represented the plaintiff in a patent infringement action involving point-of-sale activation and funding systems for prepaid gift cards.

Chamberlain and Johnson Controls v. Lear (N.D. Ill. 2005). Represented the plaintiff in a patent infringement action involving a rolling code encryption system for use with garage door openers. Settlement reached.

DESA IP, LLC, and HeathCo, LLC v. EML Technologies, LLC and Costco Wholesale Corp. (M.D. Tenn. 2004). Represented the plaintiff in a patent infringement action involving motion-sensing security lights. Settlement reached.

Semiconductor Energy Laboratory Co. Ltd. v. HannStar Display Corp. et al. (E.D. Tex. 2005). Successfully represented a Japanese client in asserting a Taiwanese manufacturer’s infringement of several patents relating to liquid crystal display technology.

Semiconductor Energy Laboratory Co. Ltd. v. AU Optronics Semiconductor Energy Laboratory Co., Ltd. v. Chi Mei Optoelectronics Corp. et al. (N.D. Cal. 2004). Successfully represented a Japanese client in asserting a Taiwanese manufacturer’s infringement of several patents relating to liquid crystal display technology.

Presentations

• “Essentials of IP Litigation for Business Lawyers,” Moderator, ABA Business Law Virtual Spring Meeting, April 19, 2021.
• "Trade Secret Misappropriation: When and How to Take Action,” with Thomas A. James, AIPLA Corporate Practice Committee, November 17, 2020.
• "Trade Secret Misappropriation: When and How to Take Action,” Fitch Even Webinar, with Thomas A. James, July 16, 2020.
• "Navigating Open Source Risk with Tools for Usage Evaluation and License Compliance,” Fitch Even Webinar, with Amanda Lowerre O’Donnell and Steven G. Parmelee, February 28, 2019.
• "IP Licensing for Business Development,” Licensing Executives Society, Chicago, September 25–26, 2018.
• “Machine Generated Assets: Understanding the Intersection of Artificial Intelligence and Intellectual Property and How to Protect Your Client,” ABA Business Law Section Spring Meeting, Orlando, Fla., April 13, 2018.
• "Ethics in IP Licensing,” Licensing Executives Society, Chicago, July 20, 2017.
• “Tech & IP: How to Leverage Intellectual Property to Maximize Your Business’s Potential,” Illinois Technology Association webinar, August 31, 2016.
• "Ethics in IP Licensing,” Licensing Executives Society, Chicago, July 28, 2016.
• “The Newly Amended Federal Rules of Civil Procedure: Making Sense of the Changes,” Wisconsin Intellectual Property Law Association, Madison, Wis., April 20, 2016.
• "The Newly Amended Federal Rules of Civil Procedure: Making Sense of the Changes," Fitch Even Webinar, January 21, 2016.
• "Current and Emerging Trends in Patent Law: Cases to Know and Cases to Watch," Fitch Even Webinar, with Eric L. Broxterman, October 29, 2015.
• "On-Sale Bars Under the America Invents Act: Avoiding Pitfalls," Fitch Even Webinar, with David A. Gosse, September 26, 2013.
• “In re Baxter: Challenging Patent Validity in the District Courts and by Reexamination in the USPTO—Two Bites at the Apple?” Fitch Even Webinar, June 21, 2012.
• "How Far Do You Have to Look Under the Rock? To What Extent Is There a Duty to Investigate Potentially Invalidating Prior Art?" American Intellectual Property Law Association 2009 Annual Meeting, Washington, D.C., Oct. 15, 2009.

Publications

• "Federal Circuit Affirms Invalidation of Digital Camera Patent as Ineligible Under § 101," Business Law Today, American Bar Association, August 2021.
• "Patent Office Panel Rejects Tribal Sovereign Immunity Claim in Inter Partes Review,” Business Law Today, American Bar Association, March 2018.
• "Federal Circuit Affirms Eligibility of Exergen Thermometer Patents," Business Law Today, American Bar Association, March 2018.
• "Federal Circuit Clarifies On-Sale Bar to Patentability for 'Secret Sales,'" Business Law Today, American Bar Association, March 2018.
• "Federal Circuit Declares Lanham Act’s Bar on Registration of Scandalous and Immoral Trademarks Unconstitutional,” Business Law Today, American Bar Association, December 2017.
• "Federal Circuit Provides Guideposts for Analyzing Venue for Patent Cases in a Judicial District," Business Law Today, American Bar Association, October 2017.
• "New Amendments to the Federal Rules of Civil Procedure: What's the Big Idea?," Business Law Today, American Bar Association, February 2016.
• Co-author, "Getting Old-School on Spam: California Supreme Court Rules that Mass E-mails from Ex-Employee Are Not Trespass to Chattels," Intellectual Property, Illinois State Bar Association, vol. 43, no. 4, June 2004.

• American Bar Association
  • Section of Business Law
    • Intellectual Property Committee

• March 20, 2023

  IP Alert | Supreme Court to Decide on Lanham Act's Extraterritorial Reach

• January 24, 2023

  Fitch Even Attorneys Named to Illinois Super Lawyers and Illinois Rising Stars Lists for 2023

• January 24, 2023

  IP Alert | Federal Circuit Finds RFID Tagging Claims Patent-Eligible Under 35 U.S.C. § 101

• December 27, 2022

  IP Alert | Federal Circuit Looks to Expert Testimony to Construe Patent with Ambiguous Intrinsic Record

• November 18, 2022

  IP Alert | Federal Circuit Affirms ITC Ruling Finding Patents Not Essential to LTE Standard

• November 17, 2022

  IP Alert | U.S. Supreme Court to Consider "Full Scope" Enablement of Claims

• June 9, 2022

  IP Alert | Failure to Raise Claim Construction Issue at Jury-Instruction Phase Constituted Forfeiture