Of Counsel
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.
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.
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.
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 MagazineMedia 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
Law360Media Mention
VW Wins in Patent Appeal Over Electrically Controlled Glasses VW Wins in Patent Appeal Over Electrically Controlled Glasses
August 19, 2026
Bloomberg LawMedia 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
Law360Media Mention
Federal Circuit Grills Sanctioned Patent Lawyer Over Conduct Federal Circuit Grills Sanctioned Patent Lawyer Over Conduct
April 9, 2026
Bloomberg LawMedia Mention
Legal Fee Tracker: Sanctions Pile Up for Texas Patent Lawyer Legal Fee Tracker: Sanctions Pile Up for Texas Patent Lawyer
August 22, 2024
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