Joseph Marinelli joined Irwin IP in 2024 as a Senior Attorney and has over 24 years of experience litigating complex patent, trade secret, trademark and false advertising cases in a variety of industries including cellular communications standards, computer memory, datacenter cooling, financial products and services, medical devices, and beverages. He has litigated numerous cases involving the infringement of standard-essential patents and FRAND claims. Joe 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 and Central Districts of California, and Delaware.
Additionally, Joe provides counsel on intellectual property portfolio management and transactions, including structuring and negotiating IP licenses, joint ventures, and technology agreements. 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.
Super Lawyers (2021-2024)
Super Lawyers Rising Stars (2016)
Joe has assisted clients in high-stakes patent, trade secret, and trademark case in a variety of courts, including the following:
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
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.
University of Wisconsin Law School, J.D. 1999 (cum laude)
Purdue University, B.S. Mechanical Engineering
“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.
“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.
CAFC Lowers Bar for Antisuit Injunctions in SEP Cases , Ericsson v. Lenovo, Inc., 2024 WL 4558664 (Fed. Cir. 2024)
Installation Payments Fly Under the On-Sale Bar Radar, Aviation Clean Air, LLC v. Ionic Air Care, Inc., No. 3:21-cv-219-TCB (N.D. Ga. Sept. 16, 2024)
Chevron is History and So Might Be Deference to the USPTO, United Therapeutics Corp. v. Liquida Techs., Inc., No. 2023-1805 (Fed. Cir. Dec. 20, 2023), petition for cert. filed, (U.S. June 10, 2024) (No. 23-1298)
Who Really Owns Your Patent? You or Your Bank?, Intell. Tech LLC v. Zebra Techs. Corp., No. 2022-2207 (Fed. Cir. May 1, 2024)
FTC’s Banning Noncompetes Means Considering Alternatives , KPM Analytics N. Am. Corp. v. Blue Sun Sci., LLC, No. CV 21-10572-MRG, 2024 WL 1558167 (D. Mass. Apr. 10, 2024)
PTAB’s Written Description Ruling Goes Up in Smoke as Federal Circuit Clarifies Requirements for Claim Ranges , Rai Strategic Holdings, Inc. v. Philip Morris Products S.A. (Feb. 9, 2024)
150 N Wacker Drive Suite 700
Chicago, IL 60606
(312) 667-6080
© 2024 Irwin IP LLP. All Rights Reserved.
Attorney Advertising. The material and information contained on these pages and on any pages linked from these pages are intended to provide general information only and not legal advice. You should consult with an attorney licensed to practice in your jurisdiction before relying upon any of the information presented here. The acts of sending email to any email addresses listed on this website or viewing information from this website do not create an attorney-client relationship. The listing of verdicts, settlements, and other case results is not a guarantee or prediction of the outcome of any other claims.
We use cookies to optimize site functionality and give you the best possible experience. By using this site, you agree to allow the use of cookies for analysis of site traffic and advertising purposes. Cookie Policy