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.

Memberships & Affiliations

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

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

Speaking Engagements

• “Seven Non-Alice Considerations for Software Patents” – May 2019
• “Defend Trade Secrets Act and Updates on U.S. Patent Law” – July 2016
• “Protecting Intellectual Property” – Moderator – June 2016
• “Patent Reform and Updates on U.S. Patent Law” – July 2015
• “Patent Trolls and Recent Updates in U.S. Patent Law” – July 2014

Publications

• “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)
• “Three Indicators a Software Patent May Be Unenforceable” – Bloomberg (May 2019)
• “7 Non-Alice Considerations for Software Patents” – Law360 (April 2019)
• “The 10 Biggest Litigation Mistakes That Companies Make” – Business.com (July 2018)
• “The District Court Split on Pleading Indirect Infringement” – Law360 (May 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)
• “Nothing Congress Has Proposed Will Help the PTO” – Law360 (April 2015)
• “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)
• “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 Burying a Material Reference Inequitable Conduct?” Law360 (Jul 2010)
• “Is there a better way to create privilege logs?” Bloomberg Law Reports (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)