Joseph M. Schaffner
Of Counsel
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  • 1875 Explorer Street
  • Suite 800
  • Reston, VA 20190-6023

Joseph M. Schaffner

Of Counsel

  • 1875 Explorer Street
  • Suite 800
  • Reston, VA 20190-6023

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.

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., 4:23-cv-02961, S.D. Tex.

Finnegan represented Volkswagen Group of America, Inc. in this patent infringement action brought by VDPP, LLC. VDPP’s complaint asserted a patent directed to a 3D display and glasses system, which it alleged was infringed by Volkswagen’s camera systems. We moved to dismiss on several grounds, including VDPP’s failure to allege compliance with the marking statute, 35 U.S.C. § 287(a). The Court agreed with our arguments and dismissed the case with prejudice. Following dismissal, the Court awarded Volkswagen its attorneys’ fees, finding both VDPP and its counsel jointly and severally liable.

4:23-cv-02961, S.D. Tex., Judge Rosenthal

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

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

Media Mention

“It Was All Frivolous” “It Was All Frivolous”

August 17, 2024

RPX Empower

Media 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

Law360

Media Mention

Texas Judge Scolds Patent Owner in Volkswagen Fees Dispute Texas Judge Scolds Patent Owner in Volkswagen Fees Dispute

August 14, 2024

Bloomberg Law
More

Professional Activities

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

Admissions

  • Virginia
  • 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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