Joe Casino litigates, licenses and provides advice on patents in high technologies fields, including telecommunications, computer, medical devices, battery, semiconductors, fiber optics and consumer electronics technologies.

He has negotiated many complex license agreements, including cross licenses of large patent portfolios where issues of infringement, validity and value intersect with vital business interests of the parties. A seasoned negotiator, he manages all aspects of licensing programs from patent assertions, defensive positions, agreements and analysis of the surrounding legal issues such as patent exhaustion, misuse, corporate law, accounting and antitrust. Recognizing that the desired outcome is a business result, he works with parties in negotiations and formal arbitration to achieve their business ends. A satisfactory resolution typically means progressing in the conference room—away from the courtroom. His litigator’s perspective of strengths and weaknesses of the underlying IP can improve his client’s business outcome.

In more hotly disputed matters, Mr. Casino often achieves victories by advancing litigation to the stage where the other side recognizes the strength of his clients’ positions and agrees to a favorable settlement.

He also has trial experience: 

• With Dan Ebenstein, he served as lead trial counsel for a major battery company in a three-week trial defending against claims against NiMH batteries used in hybrid automobiles. The case settled favorably for our client.
• In a trial in the Northern District of California against a major pharmaceutical company, Mr. Casino and the ARE team prevailed on both invalidity and inequitable conduct, obtaining an award of attorneys’ fees in favor for his client. A separate patent was defeated earlier in the case on summary judgment (Therasense, Inc. v. Becton, Dickinson and Co., Case No. 3:05-CV 3117).
• As a key member of the trial team in a recent arbitration, the team won on every issue submitted to the Tribunal, defeating six patents.

Experienced in federal district courts throughout the country, Mr. Casino also has defended many cases against non-practicing entities: in the District of Connecticut, the plaintiff dropped a case after Mr. Casino pressed a Rule 11 issue (International Control Systems, L.L.C. v. Matsushita Electric Industrial Co., Ltd. et al., Civil Action No.: 300 CV 00537). In several Eastern District of Texas actions, he has pursued successful Markman strategies that led to non-infringement rulings, which were affirmed by the Federal Circuit (see, e.g., Typhoon Touch Technologies, Inc. v. Nova Mobility Systems, Inc. v. Dell, Inc., et al. Civil Action No. 6:07cv546). In the District of Connecticut, he drafted a successful summary judgment motion of invalidity that was affirmed by the Federal Circuit (Sony Electronics, Inc. et al. v. Soundview Technologies, Inc., Case No.: 3:00-CV-754). In another Eastern District of Texas matter, he led a successful transfer strategy that resulted in one of the first multi-party patent cases that was ever transferred out of the Eastern District of Texas (In Re Compression Labs, Inc. Patent Litigation, Case No. MDL 05-01654). In the Northern District of Illinois, he drafted a successful motion for summary judgment of non-infringement due to license. (Technology Licensing Corporation v. JVC Americas Corporation, Civ. Action No. 1:12-cv-1444).

As part of the firm’s secondment program, Mr. Casino worked in Japan as in-house patent counsel for Panasonic Corporation and continues to work extensively for Panasonic and other Japanese clients.

He writes and lectures on such topics as patent monetization, global IP litigation, patent exhaustion, drafting patent license agreements, damages and risk analysis, claim construction and the doctrine of equivalents.


 

ARELaw Alerts

• ARE Copyright Law Alert:
  Supreme Court Reverses Second Circuit, Holds “First Sale” Doctrine Applies To Copies Of Copyrighted Works Made Abroad
  March 19, 2013
  
  
• ARE Trademark Law Alert:
  U.S. Supreme Court Finds Covenant Not to Sue On Current Products and “Colorable Imitations” Moots Trademark Infringement Case
  January 9, 2013
  
  
• ARE Patent Litigation Alert:
  Ninth Circuit Prevents Enforcement of German Injunction of Patents Under FRAND Licensing Obligation
  October 15, 2012
  
  
• ARE Patent Law Alert:
  Induced Infringement of Method Claims Can Be Found Even When No Single Party Performs All of the Claimed Steps
  September 7, 2012
  
  

• ARE Patent Law Alert:
  Federal Circuit Confirms That Judge Not Jury Determines Threshold Inquiry For Willfulness Determination
  July 30, 2012
  
  
• ARE Patent Law Alert:
  Overview of the Leahy-Smith America Invents Act on Patents
  September 13, 2011
  
  
• ARE Patent Litigation Alert:
  Recent Applications of the Bilski Test for Patentable Subject Matter by The Federal Circuit and District Courts
  August 17, 2011
  
  
• ARE Patent Litigation Alert:
  USPTO Proposes to Revise the Materiality Standard for the Duty to Disclose to Conform with the Therasense
  July 22, 2011
  
  
• ARE Litigation Alert:
  U.S. Supreme Court Confirms “Clear and Convincing” Evidence Standard Applies to Validity Challenges for Patents
  June 9, 2011
  
  
• ARE Patent Law Alert:
  Federal Circuit Holds That False Marking Must Be Pled With Particularity Under Fed. R. Civ. P. Rule 9(b)
  March 16, 2011
  
  
• ARE Patent Litigation Alert:
  Uniloc USA v. Microsoft: Federal Circuit Held the 25% Rule of Thumb By Damages Expert is a Fundamentally Flawed Tool for Determining a Baseline Royalty Rate In Patent Damages Analysis
  January 4, 2011
  
  
• ARE Patent Law Alert:
  Disappointingly: The Supreme Court Does Not Decide Whether Foreign Sale Exhausts Copyrights
  December 14, 2010
  
  
• ARE Patent Law Alert:
  U.S. Supreme Court Affirms Bilski, But Sets The Course Clear For Business Methods Patents
  June 28, 2010
  
  
• ARE Patent Law Alert:
  Supreme Court to Decide Whether Foreign Sale Exhuasts Copyrights
  April 23, 2010
  
  
• ARE Patent Law Alert:
  Federal District Courts in Texas Have Begun to See The First of What Could Be a Wave of Lawsuits Alleging False Patent Marking in Violation of 35 U.S.C § 292
  February 25, 2010
  
  
• ARE Patent Law Alert:
  Federal Circuit Confirms That Fines for False Patent Marking are to be Imposed for Each Unit Falsely Marked
  January 6, 2010
  
  
• ARE Patent Litigation Alert:
  FTC Closes Rambus Investigation
  May 14, 2009
  
  

Published Articles

• Patent Litigation: Mapping a Global Strategy "Practice Note"
  - December, 2012, PracticalLaw.com
  
  
• Global Patent Litigation: Mapping Your Strategy
  - November, 2012, Practical Law Company IP & Technology Magazine
  
  
• Monetization of a Firm’s Patent Rights: A Lawyer’s Perspective
  - November 02, 2012, Bloomberg BNA, BNA’s Patent, Trademark & Copyright Journal, 85 PTCJ 22
  
  
• Injunctions For FRAND-Licensed Patents: Debate Continues
  - IPLaw360, Competition Law360, Appellate Law360, New York (October 10, 2012)
  
  

• Implications of Post-Seagate Cases Finding Willful Infringement
  NYIPLA Bulletin, August/September, 2011
  
  
• CAFC rejects the 25% Rule of Thumb as a Fundamentally Flawed Toll in Reasonable Royalty Calculation (Available only in Japanese)
  - Nikkei IP Awareness, January 13, 2011 (published in Japanese)
  
  
• The Impact Of American Needle On IP And Contracts
  - IP Law360, May 26, 2010
  
  
• Increase of False Patent Marking Litigation (available only in Japanese)
  - Nikkei BP Chizai Awareness, April 26, 2010 (published in Japanese)
  
  
• Update To Recent Patent Damages Article
  - Patently-O Guest Blog, April 1, 2010
  
  
• Federal Courts Closely Scrutinizing and Slashing Patent Damage Awards
  - 2010 Patently-O Patent L.J. 24
  
  
• Transferring Cases Out of Eastern Dist. Of Texas
  - IP Law360, October 15, 2008
  
  
• High Court Sets Patent Exhaustion Law Back On Track
  - IP Law360, July 10, 2008
  
  
• Will The High Court Clarify The Exhaustion Doctrine?
  - IP Law360, January 16, 2008
  
  
• In re Seagate Technology: Willfulness and Waiver, a Summary and a Proposal
  - Patently-O Patent L.J. 1, May 14, 2007
  
  

Speaking Engagements

• December 4, 2012
  2012 Summit on Global IP Strategy for Corporate Counsel
  Location: The Harvard Club, New York, NY
• November 28, 2012 – November 29, 2012
  ICAP Patent Brokerage Monetization Event
  Location: San Franciso, CA
• October 11, 2011 – October 13, 2011
  Patent Law Seminar: (i) Licensing - Pitfalls and Strategies for License Negotiations and Agreements; (ii) Willful Infringement after Seagate; (iii) U.S. Patent Litigation For Japanese Companies
  Location: Tokyo, Osaka, and Nagoya, Japan
• May 11, 2010
  Intellectual Property Seminar - (i) The Federal Circuit's en banc decision in Ariad v. Lilly: Implications for Patent Litigation and Patent Prosecution; and (ii) Marking: Why to Mark, When to Mark, How to Mark, and the Dangers of False Marking
  Location: Kyoto, Japan