Joseph F. Marinelli
“Success, to me, means consistently exceeding my client’s objectives through an in-depth understanding of their business and through tenacious, focused, and efficient representation. If I have done that, then I’ve done my job.”

Joseph F. MarinelliPartner

Chicago
120 South LaSalle Street
Suite 1600
Chicago, IL 60603VCard
312.577.7000 
312.577.7007 fax
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Education

J.D., University of Wisconsin Law School, 1999, cum laude
B.S., Mechanical Engineering, Purdue University, 1996

Services

Technical Areas

Bar & Court Admissions

IllinoisWisconsinU.S. Patent and Trademark OfficeU.S. District Court for the Northern District of IllinoisU.S. District Court for the Western District of WisconsinU.S. District Court for the Eastern District of TexasU.S. Court of Appeals, Federal Circuit

Recognition

University of Wisconsin Law School
  • Note and Comment Editor, Wisconsin Law Review

Fitch Even partner Joseph F. Marinelli has over 15 years of experience litigating complex patent, trade secrets, and trademark cases in a variety of industries including consumer electronics, financial products and services, and medical devices. He has honed his trial skills through extensive experience in popular patent venues including the Eastern District of Texas, the Northern District of Illinois, the Northern District of California, and the Western District of Wisconsin.

Additionally, Joe provides counsel on intellectual property portfolio management and transactions, including structuring and negotiating IP licenses, joint ventures, and technology agreements. He advises clients across a broad spectrum of technologies, including liquid crystal displays, DRAM microprocessors, media players GUIs, lithium ion batteries, medical devices, pharmaceuticals, polyethylene films, food ingredients, garage door openers, and banking systems. In addition to his trial work, Joe regularly counsels clients on patent infringement avoidance, which often involves providing validity opinions.

Joe has handled appeals to the Federal Circuit Court of Appeals and to the Court of Appeals for the Seventh Circuit and has unique experience in successfully representing clients in post-grant proceedings in the U.S. Patent and Trademark Office under the America Invents Act.

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.



Google Inc. and Apple Inc. v. ContentGuard Holdings, Inc. (PTAB 2015). Integral member of team representing ContentGuard in 35 IPR and CBM proceedings filed against its digital rights management patent portfolio. Five proceedings dismissed voluntarily. After submission of patent owner preliminary responses, obtained PTAB decisions denying institution of trial in all but one remaining proceeding.

Safeway, Inc. and The Kroger Co. v. Kroy IP Holdings, LLC, IPR 2014-00685 (PTAB 2014). Member of team representing Kroy IP Holdings in IPR proceeding filed against its digital incentive program patent, U.S. 7,054,830. After submitting patent owner preliminary response, obtained PTAB decision denying institution of trial.

Alexsam, Inc. v. Best Buy LP et al. (E.D. Tex. 2013) Obtained a successful jury verdict upholding the validity and enforceability of two patents relating to computer systems for activating retail gift cards. Following a one-week trial, the jury rejected defenses asserted by seven industry-leading retailers based on novelty, inventorship, and inequitable conduct.

Alexsam, Inc. v. Barnes & Noble, Inc. (E.D. Tex. 2013) Represented the plaintiff in a one-week patent infringement jury trial involving patents relating to computer systems for activating retail gift cards.

Alexsam v. The Gap, Inc. (E.D. Tex. 2013) Represented the plaintiff in a one-week patent infringement jury trial involving patents relating to computer systems for activating retail gift cards.

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.

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Cargill, Inc. v. Canbra Foods, Ltd. (D. Or. 2003). Member of the trial team that successfully defended Canbra Foods (a division of Dow AgroSciences) in a patent infringement action related to canola oil formulations.

Presentations

  • "Ethics in IP Licensing,” Licensing Executives Society, Chicago, July 20, 2017.
  • “Tech & IP: How to Leverage Intellectual Property to Maximize Your Business’s Potential,” Illinois Technology Association webinar, with Eric L. Broxterman, Joseph H. Herron, and Michael J. Krautner, August 31, 2016.
  • "Ethics in IP Licensing,” Licensing Executives Society, Chicago, July 28, 2016.
  • “The Newly Amended Federal Rules of Civil Procedure: Making Sense of the Changes,” Wisconsin Intellectual Property Law Association, Madison, Wis., April 20, 2016.
  • "The Newly Amended Federal Rules of Civil Procedure: Making Sense of the Changes," Fitch, Even, Tabin & Flannery Webinar, January 21, 2016.
  • "Current and Emerging Trends in Patent Law: Cases to Know and Cases to Watch," Fitch, Even, Tabin & Flannery Webinar, with Eric L. Broxterman, October 29, 2015.
  • "On-Sale Bars Under the America Invents Act: Avoiding Pitfalls," Fitch, Even, Tabin & Flannery Webinar, with David A. Gosse, September 26, 2013.
  • “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.

Publications

  • “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 43.4, Illinois State Bar Association, June 2004.
  • American Bar Association
  • Intellectual Property Law Association of Chicago, Litigation Committee

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