Joseph Saltiel

Representative Matters

Joseph has assisted clients in a range of different matters, including, for example, the following:

Won summary judgment of non-infringement for a Fortune 50 company who was accused of stealing a former employee’s patented process relating to software and machine automation.

Received a jury verdict at trial of validity and infringement of client’s consumer appliance patent against its competitor.

Successfully argued at the Federal Circuit for a dismissal of appeal by appellant seeking to overturn a district court’s ruling in his client’s favor.

Successfully moved to dismiss a patent infringement case because the asserted software patents were unpatentable under Section 101.

Secured a preliminary injunction for a national food manufacture prohibiting a competitor from using a similar trademark on food products sold in grocery stores.

In an early motion, persuaded the court to dismiss claims of patent infringement against his client with prejudice by identifying fatal inadequacies with the allegations.

Prevailed in a venue dispute, which led to the case being dismissed, for a technology start-up that was sued for patent infringement.

Audited company’s procedures and policies regarding its research, development, and manufacturing of products to ensure that IP, including trade secrets, was being adequately protected.

Won summary judgment of patent infringement against a global semiconductor manufacturer.

Prevailed in a trademark opposition that was tried before the Trademark Trial and Appeal Board at the USPTO between two competitors using the same mark.

Court Admissions

Illinois

U.S. Patent and Trademark Office

U.S. Circuit Court of Appeals, Federal Circuit

U.S. Circuit Court of Appeals, Seventh Circuit

U.S. Circuit Court of Appeals, Ninth Circuit

U.S. District Court, Northern District of Illinois

U.S. District Court, Northern District of Indiana

U.S. District Court, Western District of Michigan

Trial Bar for the Northern District of Illinois

Papers, Seminars, and Teachings

“Pleading Requirements for Patent Infringement” – October 2021

“The Impact of Alice” – IPPro Magazine (Nov 2019)

“Five years after Alice: five lessons learned from the treatmet of software patents in litigation” – WIPO Magazine (Aug 2019)

Speaker, “Seven Non-Alice Considerations for Software Patents” (2019)

“Three Indicators a Software Patent May Be Unenforceable” – Bloomberg (May 2019)

“7 Non-Alice Considerations for Software Patents” – Law360 (April 2019)

“The District Court Split on Pleading Indirect Infringement” – Law360 (May 2018)

“The 10 Biggest Litigation Mistakes That Companies Make” – Business.com (July 2018)

“Should You Get A Software Patent?” – Software Executive Magazine (Feb 2018)

“Understanding How the Courts View Software Patents” – ISV Insights (Nov 2017)

“Is It Time to Rethink eBay?” – Landslide Magazine (January 2017)

Moderator, “Protecting Intellectual Property”(2016)

Speaker, “Defend Trade Secrets Act and Updates on U.S. Patent Law” (2016)

Speaker, “Patent Reform and Updates on U.S. Patent Law” 2015

“Nothing Congress Has Proposed Will Help the PTO” – Law360 (April 2015)

“Patentability of Software Patents” – February 2015

“IP Issues in Software Application Development Agreements” – November 2014

“The Odds of Getting a Case Stayed Pending AIA Review” – Law360 (November 2014)

“What Happened to Patent Reform in the U.S.” – The Stellar Journal (Aug 2014)

Speaker, “Patent Trolls and Recent Updates in U.S. Patent Law” (2014)

“Overlooked Problems with Induced Infringement” – Law360 (Jul 2014)

“Divide and Rule” – Intellectual Property Magazine (Dec 2012)

“Will the ITC Become the Next Popular Forum for NPEs?” – Bloomberg (Oct. 4, 2010)

“Is there a better way to create privilege logs?” Bloomberg Law Reports (Jul 2010)

“Is Burying a Material Reference Inequitable Conduct?” Law360 (Jul 2010)

“Sans Agreement, Patent Exhaustion Still Matters” Law 360 (April 13, 2009)

“Who Owns the IP Rights to High School Sports” – ISBA IP Newsletter (July 2008)

Irwin IP Cases of the Week

A Bloody Competition Over Lizzie Borden’s Legacy, US Ghost Adventures, LLC v. Miss Lizzie’s Coffee LLC, No. 23-2000, 2024 WL 4799288 (1st Cir. Nov. 15, 2024)

The McFlurry is Not McBroken Anymore!, U.S. Copyright Office, Exemption to Prohibition on Circumvention of Copyright Protection Systems for Access Control Technologies, 89 Fed. Reg. 42 (Oct. 28, 2024)

Single Act, Not Sale, Triggers New York Personal Jurisdiction, American Girl, LLC v. Zembrka, No. 21-cv-1381 (2d Cir. September 17, 2024)

Double Trouble? Some Double Patenting Woes Resolved , Allergan USA v. MSN Laboratories Private Ltd., No. 2024-1061 (Fed. Cir. Aug. 13, 2024)

Money Talks: Trade Secret’s New Extraterritorial Reach , Motorola Sols., Inc. v. Hytera Commc’ns Corp. Ltd., No. 22-2370, 2024 WL 3268954 (7th Cir. July 2, 2024)

Are Hard Seltzers Considered Beer? The Jury is Still Out. , Cerveceria Modelo De México, et. al, v. Cb Brand Strategies, Llc, et. al, 2024 WL 1253593 (2d Cir. Mar. 25, 2024)

Show Me, Don’t Tell Me: Conclusory Allegations Not Enough to Stop Dismissal, Int’l Bus. Machines Corp. v. Zillow Grp., Inc., – F.4th – (Fed. Cir. 2024)

Seizure Orders Not Appealable, At Least For Trade Secrets, Janssen Prods. LP v. eVenus Pharm. Labs. Inc., Case No. 22-2426 (3d Cir. Oct. 17, 2023)

Obviousness-Type Double Patenting is Alive and Well , In re: Cellect, LLC, No. 2022-1293, 2023 WL 5519716 (Fed. Cir. Aug. 28, 2023)

Olé! CAFC Rules Patent Bullfight Must Go On , Inguran, LLC, et al v. ABS Global, Inc., et al (Fed. Circ. July 5, 2023)

Amended Complaint Gives Plaintiff a Do-Over, Not the Defendant, Power Probe Grp., Inc. v. Innova Electronics Corp., 21-cv-00332 (D. Nev. Apr. 27, 2023)

Infringers Beware: Copyright Damages Not Limited to Three Years, Nealy v. Warner Chappell Music, Inc., No. 21-13232 (11th Cir. 2023)

“Dream Syndicate” Attempts at Class Certification is Just a Dream, John Waite, et al. v. UMG Recordings Inc., et al., No. 19-cv-01091 (S.D.N.Y.)

Registering Trademarks Shows Secondary Meaning , SoClean, Inc. v. Sunset Healthcare Sols., Inc., No. 2021-2311 (Fed. Cir. Nov. 9, 2022)

Dangers of Relying on Exemplary Products, Arendi S.A.R.L. v. LG Elecs. Inc., No. 2021-1967 (Fed. Cir. Sept. 7, 2022)

Obvious Claim Error Does Not Excuse Willful Infringement, Pavo Sols. LLC v. Kingston Tech. Co., Inc., 2022 WL 1815050 (Fed. Cir. June 3, 2022)

District Court Split on Pleading Standards to be Resolved?, Sonos, Inc. v. Google LLC, 2022 WL 799367 (N.D. Cal. Mar. 16, 2022)

Sales Quote Invalidates Patent, Larry G. Junker v. Medical Components, Inc., et al. (Fed. Cir. 2021)

Artwork Based On Iconic Photo Is Not Fair Use, Andy Warhol Foundation for the Visual Arts v. Goldsmith, (2nd Cir. Aug. 24, 2021)

PTAB Still Constitutional, But A Weakness Emerges, Mobility Workx, LLC v. Unified Pats., 2021 WL 4762265 (Fed. Cir. Oct. 13, 2021)

Artificial Intelligence Cannot Be An Inventor. At Least, Not Yet., Thaler v. Hirshfeld, 2021 WL 3934803 (E.D. Va. 2021)

Federal Circuit Cracks Down on PTAB Twice in One Week for Blindsiding Patent Owners, Oren Tech., LLC, v. Proppant Express Inv. LLC, 2019-1778 (Fed. Cir. July 23, 2021) Qualcomm Inc. v. Intel Corp., 2020-1589 (Fed. Cir. July 27, 2021)

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Papers, Seminars, and Teachings

Irwin IP Cases of the Week