Joshua L. Goldberg

As lead or backup counsel in more than 350 IPRs, CBMs, and PGRs, Josh represents petitioners and patent owners in proceedings involving patents directed to, for example, display, graphical user interface, telecommunications, 4G/5G, consumer electronics, software, cloud computing, image processing, mobile applications, semiconductor, electronic banking, Internet, storage, integrated circuit, mechanical, industrial manufacturing, automotive, chemical, and medical device technologies. He is vice president of the PTAB Bar Association and also edits The Practitioner’s Guide to Trials Before the Patent Trial and Appeal Board, ABA, Section of IP Law.

In his PTAB practice, Josh routinely leads teams of attorneys in simultaneous challenges to or defenses of multiple patents involved in high-stakes litigation. He splits his time approximately 60/40 between representing petitioners and patent owners. Thus, when working for petitioners, he is able to anticipate and preemptively address the moves of patent owners. And, when working for patent owners, he is able to anticipate and preemptively address the moves of petitioners.

Nearly 50 of the IPRs Josh has worked on are associated with International Trade Commission (ITC) cases, and dozens are associated with standards ranging from IEEE and ETSI networking and communications standards (e.g., 4G/5G) to MPEG compression standards to GPS standards and others. Josh was listed as one of the top eight attorneys representing patent owners and petitioners at the PTAB in 2016, according to Managing Intellectual Property (MIP); and one of the top five attorneys at the PTAB in 2015 and 2017, according to Docket Navigator Year in Review. Intellectual Asset Management (IAM) also recognized Josh for his practice in the DC region.

Josh complements his PTAB practice with litigation and counseling practices. In his litigation practice, he represents clients in U.S. district courts. In his counseling practice, he helps clients navigate competitors’ intellectual property, providing strategic advice through opinions of counsel on patent infringement, patent validity, and other intellectual property issues. He works with clients to secure their intellectual property with global patent portfolios and counsels them on various matters.

Josh managed the prosecution of more than 100 patent applications for a manufacturer of drug delivery (e.g., capsule) products. He also managed a special claim drafting project in which Finnegan attorneys worked closely with representatives of a Fortune 100 consumer electronics company to define best practices for drafting and prosecuting patent applications.

Josh has experience with a variety of mechanical and electrical technologies, including vehicular, industrial manufacturing, mining, computer, Internet, semiconductor, network security, network topology, display, communications, imaging, consumer electronics, and robotics technologies. He has written both application and operating system software, and is familiar with several programming languages, including C, C++, FORTRAN, Intel Assembly, Java, Perl, SQL, and VBA. He has also lectured on electroactive polymers, superchargers, and turbochargers. As part of a senior capstone project at Drake University, Josh developed computer models to explore performance gains achievable by various methods of coupling a combustion engine with off-the-shelf hybrid vehicle technology.