Joseph F. MarinelliPartner

Joseph F. Marinelli has a diverse intellectual property law practice covering all aspects of IP creation, management, enforcement, and licensing, with a particular emphasis on complex litigation. He has honed his strong trial skills through extensive experience in popular patent venues including the Northern District of California, the Western District of Wisconsin, and the Eastern District of Texas.

Although his primary focus is patent litigation, Joe also represents clients in litigation and dispute resolution involving trade secret misappropriation, trademark and trade dress infringement, and patent ownership.

Joe works with clients involved in a broad spectrum of technologies and applications, including liquid crystal displays, DRAM microprocessors, cable television menu systems, lithium ion batteries, medical devices, pharmaceuticals, polyethylene packaging films, food ingredients, garage door openers, and banking transactions. In addition to his trial work, Joe negotiates and prepares patent, software, and trademark licenses. He also regularly counsels clients on patent infringement avoidance, which often involves providing validity opinions and offering intellectual property portfolio valuation and management guidance.

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.

Alexsam, Inc. v. NetSpend Corp. (Travis County Dist. Ct., Tex. 2007). 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.

Alexsam, Inc. v. Pier 1 Imports, Inc. et al. (E.D. Tex. 2011). Represented the plaintiff in a patent infringement action involving point-of-sale activation and funding systems for prepaid gift cards.

Chamberlain and Johnson Controls v. Lear (N.D. Ill. 2005). Represented the plaintiff in a patent infringement action involving a rolling code encryption system for use with garage door openers. Settlement reached.

DESA IP, LLC, and HeathCo, LLC v. EML Technologies, LLC and Costco Wholesale Corp. (M.D. Tenn. 2004). Represented the plaintiff in a patent infringement action involving motion-sensing security lights. Settlement reached.

Semiconductor Energy Laboratory Co. Ltd. v. HannStar Display Corp. et al. (E.D. Tex. 2005). Successfully represented a Japanese client in asserting a Taiwanese manufacturer’s infringement of several patents relating to liquid crystal display technology.

Semiconductor Energy Laboratory Co. Ltd. v. AU Optronics Semiconductor Energy Laboratory Co., Ltd. v. Chi Mei Optoelectronics Corp. et al. (N.D. Cal. 2004). Successfully represented a Japanese client in asserting a Taiwanese manufacturer’s infringement of several patents relating to liquid crystal display technology.

Liebert Corp. et al. v. American Power Conversion Corp. (Ill. Cir. 2004). Successfully represented APC in asserting trade secret misappropriation against former distributors of building heating and cooling systems.

• “In re Baxter: Challenging Patent Validity in the District Courts and by Reexamination in the USPTO—Two Bites at the Apple?” Fitch, Even, Tabin & Flannery Webinar, June 21, 2012.
• Co-presenter, "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.
• 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 43.4, Illinois State Bar Association (June 2004).

• American Bar Association 
• Intellectual Property Law Association of Chicago, Litigation Committee