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Joshua Goldberg, former leader of Finnegan's PTAB trials section, focuses on inter partes review (IPR), covered business method (CBM), and post-grant review (PGR) proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), and on ensuing appeals to the U.S. Court of Appeals for the Federal Circuit. He currently serves on the firm's compensation committee.
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 a Treasurer 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; and one of the top five attorneys at the PTAB in 2015 and 2017, according to Docket Navigator Year in Review.
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.
Risen (Suzhou) Pharma Tech Co., Ltd. v. Alzheon, Inc.
Successfully represented Alzheon, Inc. before the Patent Trial and Appeal Board (PTAB) in securing denial of petitions for inter partes reviews (IPR) and post-grant review (PGR) challenging two of Alzheon’s patents related to ALZ-801/valitramiprosate, a treatment for Alzheimer’s Disease. Also successfully represented Alzheon before the Federal Circuit in an appeal related to isotopically enriched forms of ALZ-801/valitramiprosate.
IPR2022-01200, PGR2022-00051, PTAB, Judges Newman, Snedden, Wisz
22-2232, Fed. Cir.
FOX Factory, Inc. v. SRAM, LLC
18-2024, -2025, Fed. Cir., Judges Prost, Wallach, Hughes
IPR2017-00118, -00472, PTAB, Judges Kim, Ippolito, Cherry
SZ DJI Technology Co., Ltd. v. Synergy Drone, LLC
IPR2018-00204, -00205, -00206, -00207, -00208, PTAB, Judges Goodson, Ippolito, Scanlon
1:17-cv-00242, W.D. Tex., Judge Yeakel
Represented Google as petitioner in an inter partes (IPR) review at the Patent Trial and Appeal Board (PTAB), successfully cancelling all challenged claims related to natural language processing and information retrieval. On subsequent appeal, successfully represented Google before the Federal Circuit, securing affirmance of the PTAB’s decision.
IPR2020-00755, PTAB, Judges Droesch, McShane, Medley
22-1245, Fed. Cir., Judges Bryson, Reyna, Taranto
SFC Co., Ltd. v. LG Chem, Ltd.
IPR2020-00178, -00182, PTAB, Judges Kalan, Kaiser, Abraham
337-TA-1052; 337-TA-1073, ITC, Judges Lord, Pender, Bullock
IPR2017-01494, -01495, -01537, -01538, -01539, PTAB, Judges Droesch, Weiker, Hudalla
Event
Exploring Careers in Intellectual Property Law Exploring Careers in Intellectual Property Law
September 12, 2024
Austin
At the PTAB Blog
USPTO Releases Notice of Proposed Rule Making Codifying Several Precedential Case Factors USPTO Releases Notice of Proposed Rule Making Codifying Several Precedential Case Factors
April 25, 2024
Event
2024 Seoul Seminar: Patent Litigation in the Eastern District of Texas (EDTX) 2024 Seoul Seminar: Patent Litigation in the Eastern District of Texas (EDTX)
April 4, 2024
Seoul
At the PTAB Blog
PTAB Issues Notice of Proposed Rulemaking for Motions to Amend PTAB Issues Notice of Proposed Rulemaking for Motions to Amend
March 1, 2024
"Goldberg chairs the PTAB practice at the firm and has acted in more than 300 IPRs, covered business methods and post-grant reviews."
Intellectual Asset Management Patent 1000
“Joshua Goldberg takes charge of the PTAB practice and has special expertise on inter partes reviews arising in connection with ITC cases.”
Intellectual Asset Management Patent 1000
"Goldberg chairs the PTAB practice at the firm and has acted in more than 300 IPRs, covered business methods and post-grant reviews."
Intellectual Asset Management Patent 1000
“Joshua Goldberg takes charge of the PTAB practice and has special expertise on inter partes reviews arising in connection with ITC cases.”
Intellectual Asset Management Patent 1000
Award/Ranking
46 Finnegan Attorneys Ranked in 2024 IAM Patent 1000 46 Finnegan Attorneys Ranked in 2024 IAM Patent 1000
June 6, 2024
Intellectual Asset ManagementCommentary
Fed. Circ. OKs Boston Drug Developer's Patent Win Fed. Circ. OKs Boston Drug Developer's Patent Win
March 11, 2024
Law360Commentary
Law360’s Legal Lions of the Week Law360’s Legal Lions of the Week
February 23, 2024
Law360 PulseCommentary
These Firms Are Leading in PTAB Work These Firms Are Leading in PTAB Work
February 8, 2024
Press Release
Finnegan Receives Top Rankings from Intellectual Asset Management; 46 Attorneys Ranked Finnegan Receives Top Rankings from Intellectual Asset Management; 46 Attorneys Ranked
June 30, 2023
Intellectual Asset ManagementCommentary
These Firms Are Pulling In The Most PTAB Work These Firms Are Pulling In The Most PTAB Work
February 17, 2023
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