JOSEPH MICALLEF is a partner in the IP Litigation practice in the Washington, D.C. office.
Joe represents clients with all types of intellectual property needs in many different circumstances. His litigation experience includes all phases of litigation, from commencement of suit, through fact and expert discovery, motion practice and trial, and he has appeared before federal district and appellate courts, federal agencies and private arbitration panels. His case work has involved innovations in such cutting-edge technologies as LRDIMM and RDIMM memory modules, 4G cellular technology, reconfigurable computing systems, computer microarchitecture, operating systems, search engines, digital rights management, semiconductor fabrication techniques, satellite television, computer graphics, and voice messaging systems.
Joe has represented numerous clients, both large and small, in the investigation of possible and alleged infringement and the assertion of intellectual property rights in courts throughout the United States. Joe is also active in Sidley’s Post Grant Procedures practice, representing clients in almost 200 inter partes review proceedings implemented under the America Invents Act of 2012.
Joe is also an adjunct professor of law at Georgetown University Law Center, where he teaches Trade Secret and Patent Law. Prior to joining private practice, he clerked for the Honorable Joseph T. Walsh, Associate Justice, Supreme Court of Delaware, where he was exposed to numerous corporate and business law issues, among others. He has also co-edited two editions of Duvall’s Unfair Competition and the ITC and has authored several articles on patent-related topics.
Representative Cases:
- In re Certain Memory Modules and Components Thereof; Netlist, Inc. v. SK Hynix, Inc. – Represented SK Hynix in two ITC investigations and three district court litigations, and as Lead Counsel in twenty IPR proceedings relating to patents allegedly drawn to SEP memory module technology.
- Interdigital Technology Corp. v. Lenovo Holdings Co., Inc. – Represented Lenovo in district court litigation, and as Lead Counsel in related IPR proceedings involving eight patents allegedly drafted to SEP cellular technology.
- SRC Labs, Inc. v. Microsoft Corp. – Represented Microsoft as Lead Counsel in district court litigation and related IPR proceedings involving six patents drawn to reconfigurable computing architectures.
- IPA Technologies Inc. v. Microsoft Corp. – Represented Microsoft as Lead Counsel in district court litigation and related IPR proceedings involving six patents drawn to intelligent software agents.
- Improved Search Inc. v. Microsoft Corp. – Represented Microsoft as Lead Counsel in district court litigation and related IPR proceedings involving two patents drawn to mutli-lingual web search.
- O’Brien v. Microsoft Corp. – Represented Microsoft as Lead Counsel in IPR proceeding involving patent drawn to content streaming.
- Synkloud v. Microsoft Corp. – Represented Microsoft as Lead Counsel in eight IPR proceedings involving patents drawn to remote storage systems.
- Iron Oak v. Microsoft Corp. – Represented Microsoft as Lead Counsel in two IPR proceedings involving patents drawn to network technologies.
- In Intellectual Ventures’ first lawsuits against the insurance industry, Lead Counsel in eight inter partes review proceedings and two covered business method proceedings filed against the asserted patents, purportedly claiming database, computer networking, and mobile applications technologies. (Western District of Pennsylvania.)
- HTC Corp. et al. v. Parthenon Unified Memory Architecture LLC. – Lead Counsel. Represented HTC in inter partes review proceedings concerning five patents directed to video compression systems.
- Evolved Wireless, LLC v. Microsoft Corp. et al. (D.DE) – Lead Counsel. Represented Microsoft in patent infringement case concerning LTE random access technology.
- InterDigital Comm. Inc. et al v. Nokia Corp. et al. (D.DE) – Represented Nokia Inc. and Microsoft Mobile Oy in patent infringement case involving Nokia mobile phones and Microsoft tablets.
- Microsoft Corp. v. IPR Licensing, Inc., IPR2015-00074 – Lead Counsel. Represented Microsoft in inter partes review proceedings concerning patent directed to a dual mode cellular device.
- Microsoft Corp. v. Parallel Networks Licensing, LLC., IPR2015-00483, 484, 485 and 486 – Lead Counsel. Represented Microsoft in inter partes review proceedings concerning server technology patents.
- Microsoft Corp. v. Biscotti Inc., IPR2014-01457, 1458 and 1459 – Lead Counsel. Represented Microsoft in inter partes review proceedings concerning patents asserted against Xbox.
- Microsoft Corp. v. Telecommunications Systems Inc., IPR2015-00193 – Lead Counsel. Represented Microsoft in inter partes review proceedings concerning cellular technology patents.
- Microsoft Corp. v. Optimum Content Protection LLC., IPR2015-00049 – Lead Counsel. Represented Microsoft in inter partes review proceedings concerning cellular technology patents.
- Apple Inc. v. Cellular Communications Equipment, LLC., IPR2015-00576, 577 and 578 – Lead Counsel. Represented Apple Inc. in three inter partes review proceedings concerning three patents directed to cellular technology and asserted against the iPhone and iPad.
- Surfcast, Inc. v. Microsoft Corp., (D.ME) – Lead Counsel. Represented Microsoft in patent infringement case concerning Windows 8.
- Microsoft Corp. v. SurfCast Inc., IPR2013-00292, 293, 294 and 295 – Lead Counsel. Represented Microsoft in inter partes review proceedings successfully seeking the cancellation of 52 patent claims.
- Apple Inc. v. Achates Reference Publishing Inc., IPR2013-00081 – Represented Apple in its first inter partes review proceeding, successfully obtaining the cancellation of two patents asserted against Apple in litigation.
- In the Matter of Certain CMOS Image Sensors and Products Containing The Same (Inv. No. 337-TA-846) – Represented respondent ST Microelectronics in investigation involving CMOS image sensors.
- Data Carriers, LLC. v. Johnson & Johnson Services Inc. (D.DE.) – Represented J&J in patent infringement action concerning website search technology.
- Kelora Systems, LLC. v. Target Corporation et al. (N.D.CA.) – Lead Counsel. Represented Dell Inc. in patent infringement case concerning faceted search technology.
- In the Matter of Certain Game Devices, Components Thereof, and Products Containing The Same (Inv. No. 337-TA-757) – Lead Counsel. Represented petitioner Microsoft in investigation involving the wireless protocol for Xbox wireless controllers.
- Pulse Technologies v. Liquidnet Inc. (S.D.N.Y.) – Lead Counsel. Represented Liquidnet in a patent infringement action involving network-based order management systems for securities.
- Bel IP v. Bommerangit Inc. et al. (E.D.VA) – Lead Counsel. Represented Qantas Airlines in a patent infringement action involving luggage tracking technology.
- SimpleAir, Inc. v. AWS Convergence Technologies, Inc. et al. (E.D.TX) – Represented Research in Motion in a patent infringement action involving push technology.
- Geotag Inc. v. Royal Purple Inc., et al. (E.D.TX) – Lead Counsel. Represented a number of defendants in a patent infringement action involving search engine technology.
- Odom v. Microsoft Corp. (D.OR) – Lead Counsel. Represented Microsoft in a patent infringement action involving toolbar technology.
- Nichia Corp. v. Seoul Semiconductor Company et al., (E.D.MI) – Represented Nichia in a patent infringement action involving semiconductor light emitting device.
- Digital Reg of Texas LLC v. Microsoft Corp. (E.D.TX) – Lead Counsel. Represented Microsoft in a patent infringement action involving network-based authorizations for DRM-protected works.
- Prism Technologies v. VeriSign (D.NE) - Lead Counsel. Represented VeriSign in a patent infringement action involving SSL certificates and certification authority functionality.
- Pitchware Inc. v. Microsoft Corp. (N.D.CA) – Lead Counsel.Represented Microsoft in a patent infringement action involving a system for securely submitting information online.
- Freedom Wireless v. VeriSign (E.D.TX) – Lead Counsel. Represented VeriSign in a patent infringement action involving prepaid cellular technology.
- Amado v. Microsoft Corp. (C.D.CA) – Lead Counsel. Represented Microsoft in a patent infringement action involving spread sheet and database technology.
- Alacritech v. Microsoft Corp. (N.D.CA) – Represented Microsoft in a patent infringement action involving offloaded TCP stacks.
- Old Town Canoe Co. v. Confluence Holdings Corp. (D.OR) - Represented Confluence in a patent infringement action involving roto-molded canoes.
- Lucent v. Gateway et al. (S.D.CA) – Represented Dell in a patent infringement action involving video, audio and sound compression, touch screen technology and networking technology.
- In the Matter of Certain Semiconductor Timing Signal Generator Devices, Components Thereof and Products Containing Same (Inv. No. 337-TA-465) – Represented respondent Integrated Circuit Systems in an investigation involving clock chips.
- Pegasus Corp. v. DirecTV et al. (D.DE) – Represented Pegasus in a patent infringement action involving digital satellite system.
- In the Matter of Certain SDRAMs, DRAMs, ASICS, RAM-And-Logic Chips, Microprocessors, Microcontrollers, Processes For Manufacturing Same, and Products Containing Same (Inv. No. 337-TA-404) – Represented Samsung in investigation involving SDRAM technology.
- In the Matter of Certain Dynamic Random Access Memory Controllers and Certain Multi-Layer Integrated Circuits, as well as Chipsets and Products Containing Same (Inv. No. 337-TA-388) – Represented Intel in investigation involving DRAM controller technology.
- Intergraph Corp. v. Intel Corp. (N.D.AL) – Represented Intel in a patent infringement action involving cache memory technology.
- In the Matter of Certain Digital Satellite System (DSS) Receivers and Components Thereof (Inv. No. 337-TA-392) – Represented petitioner in investigation involving digital satellite television.