Excellence. Integrity. Success.

Joe Saltiel

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

Joseph A. Saltiel is an IP litigator with a long track record of successfully representing clients in courts across the country, USPTO, and the ITC.  Joe has substantial experience representing foreign based clients.  Joe also regularly counsels clients regarding licensing, technology agreements, opinions, due diligence, strategy, and related IP matters. Joe’s background is in the electrical and computer arts, but he has handled matters involving a variety of technologies and is skilled at quickly mastering new technologies.

Joe is a registered patent attorney and prior to joining the Firm, Joe served clients in law firms in Chicago. 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.  Joe is also an Adjunct Professor at the University of Illinois at Chicago School of Law where he teaches a class on trade secret law.

Joe received his J.D. from the University of Illinois College of Law. During law school, Joe was the Internet Editor for the Law Review and the Journal of Law, Technology, and Policy. Joe holds a master’s degree in electrical engineering and computer science from the University of Illinois at Chicago and a bachelor’s degree in computer science from the University of Illinois at Urbana-Champaign.

PRIOR EXPERIENCE

Joe 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

SPEAKING ENGAGEMENTS

  • “Pleading Requirements for Patent Infringement” – October 2021
  • “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
  • “Patentability of Software Patents” – February 2015
  • “IP Issues in Software Application Development Agreements” – November 2014
  • “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)