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Overview
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. Mr. Palys is a former USPTO supervisory patent examiner (SPE) and leans on his more than twenty 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.
His cases involve complex technologies, such as microprocessor and digital signal processing systems, computer and network architectures and systems, mobile device communications, semiconductor technologies, touchscreen technologies, ERP and business software systems, computer and network security, operating systems, and business methods.
Accolades
- The Legal 500 USA, Intellectual Property: Patents: Prosecution (2023)
- The Legal 500 USA, Appellate: States and Federal Courts Of Appeals/Supreme Courts (2021-2022)
- The Legal 500 USA, Dispute Resolution - Appellate: Courts of Appeals (2021)
- IAM Patent 1000: The World’s Leading Patent Professionals, Top Patent Professional (2016-2023)
Education
- George Washington University Law School, J.D. (with honors), 2004
- Pennsylvania State University, B.S. in Electrical Engineering, 1992
- Admitted to District of Colorado, District of Columbia, Virginia, U.S. Court of Appeals, Federal Circuit, and U.S. Patent and Trademark Office
Representations
- 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.
Engagement & Publications
- Speaker, Leveraging Latest Patent Decisions, Navigating New Complexities, Cases to Watch in 2017, Strafford CLE Webinar, January 26, 2017
- Coauthor, “Some Fed. Cir. Guidance on Procedural Safeguards for PTAB,” Law360, June 30, 2016
- Coauthor, “Cuozzo Speed Technologies, LLC v. Lee: Business as Usual and Uncertainty for Post-Grant Proceedings,” On the Docket, George Washington Law Review, June 26, 2016
- Coauthor, “PTAB Provides Guidance on AIA Estoppel Provisions,” Managing IP.com, November 2015
- Speaker, USPTO's Proposed Changes to PTAB Practice: A Primer on the Recently Proposed Amendments to the Rules Governing PTAB Proceedings, AIPLA Webinar, October 6, 2015
- Speaker, Post-Grant Proceedings Under the AIA: Overview and Discussion, Yale University Law School, October 1, 2015
- Speaker, The Twilight Zone of Privacy – A Lively Discussion of Privilege, 88th Annual Meeting Intellectual Property Institute of Canada, October 15-17, 2014
- Speaker, Post-Grant Proceedings Under the AIA: Lessons Learned & Best Practices, APABA-SV, Palo Alto, CA, September 18, 2014
- Speaker, IP Counsel Exchange on Post Grant Patent Challenges at the PTAB, Momentum Events, Palo Alto, CA, February 27-28, 2014
- Coauthor, “The Practitioner’s Guide to Trials Before the Patent Trial and Appeal Board,” American Bar Association, Section of Intellectual Property Law, 2014
- Speaker, Workshop on Strategic Use of Administrative Invalidity Proceedings in Patent Litigation, Shenzhen, China, December 5, 2013
- Speaker, Advanced Intellectual Property Seminars, Shanghai, China, December 2, 2013
- Speaker, 7th Annual U.S. Patent Litigation Training Program for Asian Corporations, Washington, D.C., September 23-27, 2013
- Speaker, APABA-SV Meeting, Asian Pacific American Bar Association-Silicon Valley (APABA-SV), Palo Alto, CA, September 12, 2013
- Speaker, Patents for Financial Services Summit, World Congress, New York, NY, July 24-25, 2013
- Speaker, Strategies and Insights on Post-Grant Review Proceedings, Silicon Valley Intellectual Property Law Association, Palo Alto, CA, June 20, 2013
- Coauthor, “Innovation in Audio: Update on Patent Activity in the Audio Field,” Audio Engineering Society, May 3, 2013
- Speaker, IP Counsel Forum for Social Media and Big Data, World Research Group (WRG), New York, NY, November 7-8, 2012
- Speaker, 6th Annual U.S. Patent Litigation Training Program for Asian Corporations, Washington, D.C., October 29-November 2, 2012
- Speaker, Patents for the Financial Services Industry, World Research Group (WRG), New York, NY, July 25-26, 2012
- Speaker, 5th Annual U.S. Patent Litigation Training Program for Asian Corporations, Washington, D.C., September 26-30, 2011
- Speaker, Patents for Financial Services Summit, World Research Group (WRG), New York, NY, July 27-28, 2011
- Speaker, 4th Annual U.S. Patent Litigation Training Program for Asian Corporations, Washington, D.C., September 27-October 1, 2010
- Speaker, Patents & The Financial Services Industry, World Research Group (WRG), New York, NY, July 28-29, 2010
- Speaker, Intellectual Property Protection for the Financial Services Industry, Global Media Dynamics, New York, NY, March 8-9, 2010
- Speaker, 3rd Annual U.S. Patent Litigation Training Program for Asian Corporations, Washington, D.C., September 21-25, 2009
Involvement
- 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 at the USPTO where he 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, 1987-1995