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Finnegan
Joseph M. Schaffner
Of Counsel
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  • 1875 Explorer Street
  • Suite 800
  • Reston, VA 20190-6023
+1 571 203 2725
joseph.schaffner@finnegan.com joseph.schaffner@finnegan.com

Joseph M. Schaffner

Of Counsel

  • +1 571 203 2725 +1 571 203 2725
  • joseph.schaffner@finnegan.com joseph.schaffner@finnegan.com
  • 1875 Explorer Street
  • Suite 800
  • Reston, VA 20190-6023
  • vCard

Joe Schaffner focuses on district court litigation, appeals to the U.S. Court of Appeals for the Federal Circuit (CAFC), and post-grant proceedings. He regularly drafts appeal briefs and argues before the CAFC. Joe represents clients across a spectrum of technologies, including consumer electronics, software architectures, wireless communications, semiconductors, machine learning (ML), signal processing, medical devices, and automotive electronics.

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.

 

Et Cetera

  • Served at the U.S. Court of Appeals for the Federal Circuit as a judicial law clerk to the Honorable Alvin A. Schall, 2016-2017.
  • Served on the Virginia Law Review, 2011-2013.
  • Bracewell & Giuliani Best Appellate Brief Award, 2011.

Experience

VDPP, LLC v. Volkswagen Group of America, Inc.

Secured dismissal with prejudice by establishing that plaintiff failed to plead compliance with the patent-marking requirements of 35 U.S.C. § 287. Successfully defended the judgment on appeal, where the Federal Circuit issued a precedential decision affirming the dismissal and attorney-fee award, strengthening precedent on patent marking and appellate jurisdiction. 

4:23-cv-02961, S.D. Tex., Judge Rosenthal
24-2226, Fed. Cir., Judges Lourie, Cunningham, Moore

ClearOne, Inc. v. Shure Acquisition Holdings, Inc.

Represented appellees Shure Acquisition Holdings, Inc. and Shure Incorporated in an appeal from the Patent Trial and Appeal Board (PTAB). In a precedential decision, the Federal Circuit unanimously upheld the validity of Shure’s substitute claims and rejected ClearOne’s procedural challenges to the Board’s ruling. The underlying inter partes review (IPR) was one of the first to utilize the Board’s Motion to Amend Pilot Program.

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

Representing FedEx Corporate Services in six-patent infringement lawsuit against competitor Roambee related to FedEx's SenseAware products and services.

1:21-cv-00175, D. Del., Judge Connolly

SharkNinja Operating LLC et al. v. iRobot Corporation

Representing SharkNinja in five IPRs relating to robot vacuums.

IPR2020-00732, -00733, -00734, -00735, -00863, PTAB

FedEx Corp. v. Intellectual Ventures II LLC

Represented FedEx as petitioner at the PTAB, where the Board invalidated challenged claims of three Intellectual Ventures (IV) patents. After initially appealing the PTAB’s adverse decisions to the Federal Circuit, IV voluntarily dismissed their appeals, leaving intact the decisions invalidating claims from their patents.

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.

More

Insights

Seminar

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

Webinar

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 Magazine

News

Media Mention

Law360's Legal Lions of the Week: Volkswagen Group of America, Inc. Law360's Legal Lions of the Week: Volkswagen Group of America, Inc.

August 21, 2026

Law360

Media Mention

VW Wins in Patent Appeal Over Electrically Controlled Glasses VW Wins in Patent Appeal Over Electrically Controlled Glasses

August 19, 2026

Bloomberg Law

Media Mention

Federal Circuit Backs Volkswagen’s $207,500 Fees Against NPE Federal Circuit Backs Volkswagen’s $207,500 Fees Against NPE

August 19, 2026

Intellectual Asset Management (IAM)

Media Mention

Fed. Circ. Chief Feels 'Bright-Line Rule Coming' for IP Marking Fed. Circ. Chief Feels 'Bright-Line Rule Coming' for IP Marking

April 9, 2026

Law360

Media Mention

Federal Circuit Grills Sanctioned Patent Lawyer Over Conduct Federal Circuit Grills Sanctioned Patent Lawyer Over Conduct

April 9, 2026

Bloomberg Law

Media Mention

Legal Fee Tracker: Sanctions Pile Up for Texas Patent Lawyer Legal Fee Tracker: Sanctions Pile Up for Texas Patent Lawyer

August 22, 2024

Reuters
More

Professional Activities

  • Order of the Coif
  • Virginia Bar Association
  • Virginia State Bar (Intellectual Property Section)
Admissions and Education

Admissions

  • Virginia
  • United States Supreme Court
  • U.S. District Court, E.D. Texas
  • U.S. District Court, E.D. Virginia
  • U.S. Court of Appeals, Federal Circuit
  • U.S. Court of Appeals, Veterans Claims

Education

University of Virginia School of Law
J.D., 2013
University of Virginia
B.A., Mathematics, summa cum laude, 2009
University of Virginia
B.A., Physics, summa cum laude, 2009

Clerkships

  • U.S. Court of Appeals, Federal Circuit, Hon. Alvin Schall

Joseph's Practices

Global IP Enforcement, Litigation, and Trials
Federal Circuit and Supreme Court Appeals
Patent Litigation and Trials
Patent Office Invalidation Proceedings
Ex Parte Reexamination (EPR)
PTAB Invalidation Proceedings: IPR and PGR
Prosecution and Portfolio Management
Appeals to the PTAB
Ex Parte Reexamination (EPR)
Patent Drafting and Prosecution

Joseph's Industries

AI, Electronics, and Information Technology
Electrical and Computer Technology
Electronic Devices and Components
Nanotechnology
Hospitality, Gaming, and Leisure
Gaming
Life Sciences
Medical Device and Diagnostics

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