Joseph Marinelli

Representative Matters

Joe has assisted clients in high-stakes patent, trade secret, and trademark case in a variety of courts, including the following:

• Represented defendants against claims of breach of contract, trade secret misappropriation, and tortious interference, among others.
• Lead counsel for California vineyard in trademark infringement and false advertising litigation and arbitration against California winemaker. Successful settled dispute in arbitration.
• Represented patent owner in asserting infringement of its patented technology relating to systems for cooling data center racks and similar electronics against a direct competitor. Settlement was reached.
• Lead counsel representing the plaintiff in patent infringement actions related to memory chip design. Case settled shortly before trial.
• Represented plaintiff in patent infringement action against major computer memory makers. Achieved settlements with many defendants.
• Integral member of team representing patent owner 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.
• Member of team representing patent owner in IPR proceeding filed against its digital incentive program patent. Obtained PTAB decision denying institution of trial.
• 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.
• Represented plaintiff in a one-week patent infringement jury trial involving patents relating to computer systems for activating retail gift cards.
• 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.
• Represented the plaintiff in a patent infringement action involving a rolling code encryption system for use with garage door openers. Settlement reached.
• Represented the plaintiff in a patent infringement action involving motion-sensing security lights. Settlement reached.
• Successfully represented a client in asserting infringement of several patents relating to liquid crystal display technology.

Memberships & Affiliations

• American Bar Association
• American Intellectual Property Law Association
• Trial Bar for the Northern District of Illinois

Court Admissions

Illinois
Wisconsin
Circuit Court of Appeals, Seventh Circuit
Circuit Court of Appeals, Federal Circuit
District Court for the Northern District of Illinois
District Court for the Eastern District of Texas
District Court for the Western District of Texas
District Court for the Western District of Wisconsin
Patent and Trademark Office

Speaking Engagements

• “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,” AIPLA Corporate Practice Committee, November 17, 2020.
• “Trade Secret Misappropriation: When and How to Take Action,” Webinar, July 16, 2020.
• “Navigating Open Source Risk with Tools for Usage Evaluation and License Compliance,” Webinar, 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.
• “Current and Emerging Trends in Patent Law: Cases to Know and Cases to Watch,” Webinar, October 29, 2015.
• “On-Sale Bars Under the America Invents Act: Avoiding Pitfalls,” Webinar, September 26, 2013.
• “In re Baxter: Challenging Patent Validity in the District Courts and by Reexamination in the USPTO—Two Bites at the Apple?” 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.

Prior Experience

Prior to joining Irwin IP, Joe was a partner at a large IP boutique firm in Chicago and an associate at an Am Law 200 general practice firm.

At Purdue University, Joe participated in a cooperative engineering program with a large aerospace company. 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.