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Joseph Saltiel

Member

Practices & Industries:

Utility Patent, Design Patent, Copyright, Trademark & Advertising, Other Complex Litigation, Patent Office Validity Challenges, IP Counseling and Transactions

Contact Information:

jsaltiel@irwinip.com
(312) 667-6283
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Bio
Experience
Credentials
Publications

Joseph Saltiel is an IP litigator with over 20 years of experience successfully representing clients in courts across the country, the USPTO, the ITC, and the Federal Circuit.  While he has prevailed on behalf of his clients at trials and appeals, Joseph also has achieved significant victories for his clients without the need for trial. 

Contributing to his clients’ successes is Joseph ability to apply his legal experience to complex technologies.  With a background in the electrical and computer arts, he handles matters related to electronics, software, and networking.  But, because he is skilled at mastering new technologies, he has experience handling matters in other areas such as mechanical, design patents, medical devices, and chemical arts.   

Joseph is a registered patent attorney who handles patent cases as well as other IP matters including copyrights, trademarks, and trades secrets.  In addition to litigation, Joseph counsels clients on IP related issues such as technology agreements, opinions of counsel, and licensing. 

Joseph is an Adjunct Professor at the University of Illinois at Chicago School of Law where he teaches classes on both patent law and trade secrets. Prior to becoming a lawyer, he was a member of the technical staff at Bell Labs where he designed and wrote software relating to the telecommunications industry.   

Joseph received his J.D. and B.S. in Computer Science from the University of Illinois at Urbana-Champaign and a M.S. in Electrical Engineering and Computer Science from the University of Illinois at Chicago.  

Distinctions

Leading Lawyer (2020-present)
Illinois Super Lawyer (2024)
3-Time Recipient of Super Lawyers Rising Star – Intellectual Property Litigation

 

 

Representative Matters

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

  • Achieved summary judgment of non-infringement against a competitor asserting patents related to network communication software. 
  • Through a patent enforcement action, compelled client’s competitor to stop selling its infringing mechanical-related product.  
  • 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.  

Memberships & Affiliations

  • American Bar Association
  • Intellectual Property Law Association of Chicago
  • Hispanic Lawyers Association of Illinois

Bar Admissions

Illinois

Court Admissions

  • 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

Education

University of Illinois College of Law, Urbana-Champaign J.D. (magna cum laude)
University of Illinois at Chicago M.S. Electrical Engineering and Computer Science
University of Illinois, Urbana-Champaign B.S. Computer Science

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

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)

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