Joseph E. PalysJoseph E.Palys

Partner, Intellectual Property

josephpalys@paulhastings.com

Washington, D.C.+1 202 551 1996

Joe Palys is a partner in the Intellectual Property practice at Paul Hastings and is based in the firm’s Washington, D.C. office. He focuses his patent practice on IP litigation and post-grant proceedings, as well as patent portfolio monetization and management. Joe is a former USPTO supervisory patent examiner (SPE) and leans on his more than 20 years of patent experience to counsel clients regarding District Court and Federal Circuit appeal matters, along with inter partes review (IPR) and post-grant review (PGR, CBM) proceedings implemented under the America Invents Act (AIA). He has extensive experience coordinating federal court and post-grant proceedings. He is the current chair of the recently formed PTAB Bar Association’s Program committee and routinely presents on AIA-related topics.

Represented clients in over 200 IPRs and CBMs, and dozens of reexamination proceedings, including eBay, VirnetX, Mitek Systems, CoreLogic, Samsung, Walgreens, Wintek, Google, SAP and Zimmer.
Represented SAP in the first filed CBM-PGR proceeding under the AIA and in cases in District Court, the Federal Circuit and the U.S. Patent and Trademark Office.
Represents The Walgreen Company in a patent litigation involving coupon redemption processes in the U.S. District Court for the Eastern District of Texas and in related multiple CBM proceedings before the PTAB.
Represents L’Oréal USA, Inc. in a District of Delaware action involving hair care technologies.
Represented SAP in district court, the Federal Circuit, and the U.S. Patent and Trademark Office (USPTO) regarding an asserted patent relating to supply chain software, and in a multi-patent infringement case and reexaminations relating to supply chain and supplier relationship management technologies.
Represented Wintek Corporation as lead counsel in patent infringement cases involving touch panel technologies in the U.S. District Court for the Eastern District of Texas and the U.S. District Court for the Northern District of California. Also led multiple IPR matters involving the related patents.
Represented Huawei as lead counsel in patent infringement litigations in the District of Colorado and the Eastern District of Texas regarding voice recognition and mobile device communication technologies.
Represented ABBYY in a multi-patent infringement litigation involving character recognition technologies in the U.S. District Court for the Northern District of California and also led ABBYY''s reexamination challenges of multiple patents before the USPTO.
Represented BIAX Corporation in multiple patent infringement litigations relating to parallel microprocessor technologies in the ITC, District of Colorado, and Eastern District of Texas.
Represented AOL in multi-patent infringement litigations involving content filtering and parental control software in the Eastern District of New York and Eastern District of Texas.
Represented InterVideo in patent cases involving computer power-up processes in the ITC and in reexamination proceedings.
Represented AeroScout in a patent infringement litigation involving remote sensor technologies.

Intellectual Property: Patents: Prosecution
Legal 500 U.S.
Appellate: States and Federal Courts Of Appeals/Supreme Courts
Legal 500 U.S.
Dispute Resolution - Appellate: Courts of Appeals
Legal 500 U.S.
Top Patent Professional
IAM Patent 1000

“Some Fed. Cir. Guidance on Procedural Safeguards for PTAB,” Law360, Co-Author
JUNE 30, 2016
“Cuozzo Speed Technologies, LLC v. Lee: Business as Usual and Uncertainty for Post-Grant Proceedings,” On the Docket, George Washington Law Review, Co-Author
JUNE 26, 2016
“PTAB Provides Guidance on AIA Estoppel Provisions,” Managing IP.com, Co-Author
November 2015
“The Practitioner’s Guide to Trials Before the Patent Trial and Appeal Board,” American Bar Association, Section of Intellectual Property Law, Co-Author
2014
“Innovation in Audio: Update on Patent Activity in the Audio Field,” Audio Engineering Society, Co-Author
MAY 3, 2013

Member
PTAB Bar Association, Chair, Program Committee
Member
American Intellectual Property Law Association
Member
American Bar Association
Member
Virginia Bar Association
Former supervisory patent examiner (SPE) and primary examiner
USPTO (Examined patent applications involving computer network security, computer fault tolerance and recovery, and error detection technologies) (1993-2000)
Former Sergeant
U.S. Army Reserves, 1st Battalion, 314th Infantry Regiment, 79th Infantry Division (1987-95)

"Leveraging Latest Patent Decisions, Navigating New Complexities, Cases to Watch in 2017," Strafford CLE Webinar, Speaker
JANUARY 26, 2017
"USPTO''s Proposed Changes to PTAB Practice: A Primer on the Recently Proposed Amendments to the Rules Governing PTAB Proceedings," AIPLA Webinar, Speaker
OCTOBER 6, 2015

"Post-Grant Proceedings Under the AIA: Overview and Discussion," Yale University Law School, Speaker
OCTOBER 1, 2015
"Post-Grant Proceedings Under the AIA: Lessons Learned & Best Practices," APABA-SV, Palo Alto, CA, Speaker
SEPTEMBER 18, 2014
"The Twilight Zone of Privacy – A Lively Discussion of Privilege," 88th Annual Meeting Intellectual Property Institute of Canada, Speaker Oct. 15-17,
2014
"IP Counsel Exchange on Post Grant Patent Challenges at the PTAB," Momentum Events, Palo Alto, CA, Speaker Feb. 27-28,
2014
"Workshop on Strategic Use of Administrative Invalidity Proceedings in Patent Litigation," Shenzhen, China, Speaker
DECEMBER 5, 2013
"Advanced Intellectual Property Seminars," Shanghai, China, Speaker
DECEMBER 2, 2013
"APABA-SV Meeting," Asian Pacific American Bar Association-Silicon Valley (APABA-SV), Palo Alto, CA, Speaker
SEPTEMBER 12, 2013
"Strategies and Insights on Post-Grant Review Proceedings," Silicon Valley Intellectual Property Law Association, Palo Alto, CA, Speaker
JUNE 20, 2013
7th Annual U.S. Patent Litigation Training Program for Asian Corporations, Washington, D.C., Speaker Sept. 23-27,
2013
"Patents for Financial Services Summit," World Congress, New York, NY, Speaker July 24-25,
2013
"IP Counsel Forum for Social Media and Big Data," World Research Group (WRG), New York, NY, Speaker Nov. 7-8,
2012
"Patents for the Financial Services Industry," World Research Group (WRG), New York, NY, Speaker July 25-26,
2012
5th Annual U.S. Patent Litigation Training Program for Asian Corporations, Washington, D.C., Speaker Sept. 26-30,
2011
"Patents for Financial Services Summit," World Research Group (WRG), New York, NY, Speaker July 27-28,
2011
"Patents & The Financial Services Industry," World Research Group (WRG), New York, NY, Speaker July 28-29,
2010
"Intellectual Property Protection for the Financial Services Industry," Global Media Dynamics, New York, NY, Speaker March 8-9,
2010
3rd Annual U.S. Patent Litigation Training Program for Asian Corporations, Washington, D.C., Speaker Sept. 21-25,
2009
6th Annual U.S. Patent Litigation Training Program for Asian Corporations, Washington, D.C., Speaker Oct. 29-Nov. 2, 2012)
4th Annual U.S. Patent Litigation Training Program for Asian Corporations, Washington, D.C., Speaker Sept. 27-Oct. 1, 2010)

Intellectual Property

Intellectual Property

Life Sciences & Healthcare

Life Sciences & Healthcare