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Finnegan
Joseph M. Myles
Associate
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vCard
  • 901 New York Avenue, NW
  • Washington, DC 20001-4413
+1 202 408 4372
joseph.myles@finnegan.com joseph.myles@finnegan.com

Joseph M. Myles

Associate

  • +1 202 408 4372 +1 202 408 4372
  • joseph.myles@finnegan.com joseph.myles@finnegan.com
  • 901 New York Avenue, NW
  • Washington, DC 20001-4413
  • vCard

Joseph Myles focuses on patent litigation in a range of patent venues, including district courts, the Patent Trial and Appeals Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), and the Court of Appeals for the Federal Circuit (CAFC). He leverages trial experience gained through interning at the D.C. Superior Court to represent high-tech companies through all phases of litigation.

Joseph is experienced in pre-litigation strategy, discovery, and motions practice, advising clients through the formation of patent-specific litigation positions, including infringement, validity, claim construction, and unenforceability. He drafts and oversees Patent Office challenges for petitioners and patent owners, including inter partes reviews, post-grant reviews, and ex parte reexaminations. Joseph counsels clients through the patent application process before the USPTO, including designing patent protection plans, managing large portfolios, and overseeing office action responses and examiner interviews.

Joseph drafts motions and claim construction briefing, investigates infringement and validity positions, and coordinates district court and PTAB trial strategy. He is well versed in using the 28 U.S.C. § 1782 discovery procedure to seek important litigation materials from U.S. parties for use in foreign patent infringement proceedings. He has written extensively on the uses of § 1782 discovery and participated in the formation of § 1782 practical guidance through The Sedona Conference. Joseph also assists clients with pre-litigation strategy, including drafting noninfringement opinions and investigating potential patent infringement.

Joseph oversees patent portfolios for both front end and back-end features of mobile apps, including applications of object-oriented design, HTML5 architecture, BIAN, and the Angular, Apache Kafka, and MICRON frameworks. He has secured patent protection for electronic product and service recommendation systems and bank account management systems.

Joseph is an active member of the VLSI Amicus Briefing ad hoc working group of the American Intellectual Property Law Association (AIPLA) PTAB Trial committee, and he is well-published in the area of international discovery.

Et Cetera

  • Submissions editor, Federal Circuit Bar Journal, 2018-2019.
  • Author. "Highway to Helsinn: A New Test for the On-Sale Bar," Federal Circuit Bar Journal, 2018.

Experience

Stragent, LLC v. BMW et al.

Obtained a royalty-free license to Stragent’s entire patent portfolio after forcing Stragent to concede in open court that it could not present enough evidence to prove infringement of its asserted patents, which Stragent read on the automotive communications standard AUTOSAR. Successfully invalidated multiple of Stragent’s patents before the Patent Office, with one victory on appeal and additional IPR petitions pending at the time of case resolution.

1:20-cv-00510, D. Del., Judge Wolson
1:23-cv-00005, D. Del., Judge Wolson
IPR2023-00333, -00334, PTAB
22-2062 , Fed. Cir.
IPR2021-00417, -00418, -00419, PTAB, Judges Galligan, Repko, White

In the Matter of Certain Semiconductor Devices and Products Containing the Same

Achieved a comprehensive victory for respondent Innoscience, a global leader in gallium nitride (GaN) power devices, in a high-profile patent dispute before the U.S. International Trade Commission (ITC). The ITC’s Final Determination confirms that Innoscience avoided all patent claims asserted by Infineon.

337‑TA‑1414, ITC, Judge Moore

Carrum Technologies, LLC v. BMW of North America, LLC, et al.

Obtained complete victory against Carrum on appeal of the District of Delaware’s claim construction to the Federal Circuit following Carrum’s stipulation of non-infringement under the claim construction, thereby exonerating BMW’s ACC system, first sold in 2000, against Carrum’s 2004 patents. Invalidated several asserted claims through post-grant efforts before the U.S. Patent Office, including IPRs and EPRs, and pursued claims through proceedings before the Eastern District of Virginia to vindicate BMW’s patent challenges.

1:18-cv-01645, D. Del., Judge Andrews
21-1435, 24-1480, Fed. Cir., Judges Clevenger, Cunningham, Lourie, Moore, Prost, Taranto
IPR2019-00902, -00903, -00904, -00905, -00927, 00928, PTAB, Judges Browne, Scanlon, Tornquist
90/019,010, CRU

United States Automobile Association v. Truist Bank

Represented Truist Bank in a patent litigation in the Eastern District of Texas against USAA, who asserted five patents directed to mobile deposit technologies. After asserting counterclaims on six patents and filing IPR petitions for each of USAA’s asserted patents, Finnegan’s strategy led to a favorable dismissal.  

2:22-cv-00291, E.D. Tex., Judge Gilstrap
IPR2022-01593, IPR2023-00143, -00144, -00183, -00184, -00829, PTAB, Judges Dirba, Droesch, McMillin, White, Zecher

Transcend Shipping Systems, LLC v. FedEx Corp.

After mounting a strong initial defense, including motions to dismiss and transfer, the plaintiff Transcend dismissed the case.

2:22-cv-00110, E.D. Tex., Judges Gilstrap, Payne

Insights

Conference

2026 PTAB Bar Association Annual Conference 2026 PTAB Bar Association Annual Conference

March 18-20, 2026

Washington, DC

IP Updates

The New USPTO Streamlined Claim Set Pilot Program: A Possible Fast-Track to Issued Patents The New USPTO Streamlined Claim Set Pilot Program: A Possible Fast-Track to Issued Patents

October 27, 2025

IP Updates

USPTO Launches AI-Assisted Automated Search Tool (Automated Search Pilot Program): What Patent Counsel Need to Know USPTO Launches AI-Assisted Automated Search Tool (Automated Search Pilot Program): What Patent Counsel Need to Know

October 24, 2025

Articles

Common Ground: An Apparent Government Desire to Return Eligibility to its Roots

Common Ground: An Apparent Government Desire to Return Eligibility to its Roots Common Ground: An Apparent Government Desire to Return Eligibility to its Roots

October 14, 2025

Articles

Patenting Space: Promoting Innovations and Patents for Exploring Our Final Frontier

Patenting Space: Promoting Innovations and Patents for Exploring Our Final Frontier Patenting Space: Promoting Innovations and Patents for Exploring Our Final Frontier

March 5, 2025

SpaceNews

Articles

Corporate Confidentiality Unlocked: Leveraging Common Interest Privilege for Effective Collaboration

Corporate Confidentiality Unlocked: Leveraging Common Interest Privilege for Effective Collaboration Corporate Confidentiality Unlocked: Leveraging Common Interest Privilege for Effective Collaboration

October 23, 2024

Corporate Counsel
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News

Press Release

Finnegan Secures Decisive ITC Victory for Innoscience in Final Determination Finnegan Secures Decisive ITC Victory for Innoscience in Final Determination

May 11, 2026

Press Release

BMW AG Announces Resolution of WDTX Declaratory Judgment against Onesta, Following Broad Covenant Not to Sue to BMW AG by Onesta BMW AG Announces Resolution of WDTX Declaratory Judgment against Onesta, Following Broad Covenant Not to Sue to BMW AG by Onesta

April 23, 2026

Commentary

Fed. Circ. Ends Anti-Suit Injunction Appeal in BMW Case Fed. Circ. Ends Anti-Suit Injunction Appeal in BMW Case

April 20, 2026

Law360

Media Mention

Law360's Legal Lions of the Week: BMW  Law360's Legal Lions of the Week: BMW 

February 20, 2026

Law360

Commentary

Albright Stresses IP Sovereignty in Allowing BMW Injunction Albright Stresses IP Sovereignty in Allowing BMW Injunction

February 13, 2026

Law360

Press Release

Finnegan Secures Major ITC Victory in Initial Determination for Innoscience Finnegan Secures Major ITC Victory in Initial Determination for Innoscience

January 29, 2026

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Professional Activities

  • American Bar Association
    (Intellectual Property Law Section)
  • American Intellectual Property Law Association (AIPLA)
    (Patent and Trial Appeal Board (PTAB) Trial Committee)
  • Federal Circuit Bar Association
  • PTAB Bar Association
Admissions and Education

Admissions

  • U.S. Patent and Trademark Office
  • Washington
  • District of Columbia
  • U.S. District Court, W.D. Texas
  • U.S. Court of Appeals, Sixth Circuit
  • U.S. Court of Appeals, Veterans Claims
  • U.S. District Court, E.D. Michigan
  • U.S. Court of Appeals, Federal Circuit

Education

George Washington University Law School
J.D., 2019
University of British Columbia
B.A., Computer Science and Economics, 2016

Joseph's Practices

AI + Finnegan
AI + Patent
Global IP Enforcement, Litigation, and Trials
ITC Section 337 Investigations and Trials
Patent Litigation and Trials
Pretrial Strategies
Patent Office Invalidation Proceedings
PTAB Invalidation Proceedings: IPR and PGR
Prosecution and Portfolio Management
Patent Drafting and Prosecution

Joseph's Industries

AI, Electronics, and Information Technology
Artificial Intelligence (AI) and Machine Learning (ML)
Augmented Reality/Virtual Reality (AR/VR)
Electrical and Computer Technology
Communications
Financial Services and Business Systems
Hospitality, Gaming, and Leisure
Gaming
Life Sciences
Medical Device and Diagnostics

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