Of Counsel
Joe Schaffner helps companies grow, leverage, and defend their intellectual property. His practice focuses on district court litigation, proceedings at the Patent Trial and Appeal Board (PTAB), and appeals to the U.S. Court of Appeals for the Federal Circuit. He represents clients across a wide spectrum of technologies, including consumer electronics, software architectures, semiconductors, quantum computing, machine learning, and nanotechnology.
Joe represents innovative companies in complex, high-risk litigation, utilizing insight gained through serving as a law clerk at the Federal Circuit. He has experience with all phases of patent litigation, including developing trial strategies, claim construction, motions practice, depositions, fact discovery, expert discovery, jury trial, and appeal. Joe also advises clients on the strategic implications of PTAB proceedings with copending district court actions.
Joe has represented both petitioners and patent owners in dozens of post-grant proceedings before the PTAB, including inter partes reviews (IPRs), covered business method reviews (CBMs), and post-grant reviews (PGRs). He has experience with every facet of PTAB trials, has delivered arguments before the Board, and has prepared papers in ex parte and inter partes reexamination proceedings.
Joe's prosecution practice focuses on technologies involving complex mathematical, computational, and physics-based phenomena. He has drafted, prosecuted, or overseen the prosecution of more than three hundred U.S. patent applications.
Prior to his legal career, Joe worked as a scientist for Arete Associates, where he modeled remote sensing systems and developed optical algorithms for imaging devices under a top secret/sensitive compartmented information (TS/SCI) clearance. In law school, he undertook clinical work in patent prosecution and criminal defense.
Joe's pro bono practice includes representing veterans before the U.S. Court of Appeals for Veterans Claims.
VDPP, LLC v. Volkswagen Group of America, Inc., 4:23-cv-02961, S.D. Tex.
4:23-cv-02961, S.D. Tex., Judge Rosenthal
ClearOne, Inc. v. Shure Acquisition Holdings, Inc.
21-1517, Fed. Cir., Judges Moore, Newman, Hughes
IPR2019-00683, PTAB, Judges Zecher, Jurgovan, Zado
Shure Incorporated et al. v. ClearOne, Inc.
Represented plaintiff Shure Incorporated and Shure Acquisition Holdings, Inc. involving utility and design patents and false claims related to ceiling microphone array products. The design patent trial concluded in November 2021 and the case later settled favorably.
1:19-cv-01343, D. Del., Judge Andrews
FedEx Corporate Services, Inc. v. Roambee Corporation
1:21-cv-00175, D. Del., Judge Connolly
SharkNinja Operating LLC et al. v. iRobot Corporation
IPR2020-00732, -00733, -00734, -00735, -00863, PTAB
FedEx Corp. v. Intellectual Ventures II LLC
IPR2017-00729, PTAB, Judges McKone, Parvis, Hudalla
IPR2017-00741, PTAB, Judges McKone, Parvis, Hudalla
IPR2017-00859, PTAB, Judges Jefferson, McKone, Hudalla
18-2402, 18-2401, 19-1065, Fed. Cir.
Event
Advanced Patent Law: The Strategic Use of Supplemental Examination to Shield Patents from Claims of Inequitable Conduct and Unclean Hands Advanced Patent Law: The Strategic Use of Supplemental Examination to Shield Patents from Claims of Inequitable Conduct and Unclean Hands
March 5, 2020
Minneapolis
Event
Divided Patent Infringement and Inducement: Protecting IP Rights and Allocating Liability Divided Patent Infringement and Inducement: Protecting IP Rights and Allocating Liability
January 21, 2020
Webinar
Prosecution First Blog
When History Fails to Repeat Itself: Past Success in Supplemental Examination Does Not Guarantee Future Results When History Fails to Repeat Itself: Past Success in Supplemental Examination Does Not Guarantee Future Results
November 7, 2019
Prosecution First Blog
Supplemental Examinations and Alice: The Bare Essentials of When Not to Poke the Bear Supplemental Examinations and Alice: The Bare Essentials of When Not to Poke the Bear
July 9, 2019
Articles
Autonomous Vehicle Players are Doubling Down on Patents Autonomous Vehicle Players are Doubling Down on Patents
March 27, 2019
Haaretz Cyber MagazineMedia Mention
Legal Fee Tracker: Sanctions Pile Up for Texas Patent Lawyer Legal Fee Tracker: Sanctions Pile Up for Texas Patent Lawyer
August 22, 2024
ReutersMedia Mention
Texas Atty Must Pay Volkswagen $200K in Fees for Patent Suit Texas Atty Must Pay Volkswagen $200K in Fees for Patent Suit
August 14, 2024
Law360Media Mention
Texas Judge Scolds Patent Owner in Volkswagen Fees Dispute Texas Judge Scolds Patent Owner in Volkswagen Fees Dispute
August 14, 2024
Bloomberg LawMedia Mention
“This Was a Lie”: A Long but Partial List of “Flaws” Justifies Fees Shift “This Was a Lie”: A Long but Partial List of “Flaws” Justifies Fees Shift
July 21, 2024
RPX EmpowerMedia Mention
Company Accusing Volkswagen of Infringement Faces Sanctions Company Accusing Volkswagen of Infringement Faces Sanctions
July 12, 2024
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