Joseph Re

Representative Matters for IP Owner/Plaintiff
Representative Matters for Accused Infringer/Defendant
Other Noteworthy Cases
Articles
Books and Chapters
Speeches & Seminars

Representative Matters for IP Owner/Plaintiff

• Masimo Corp. v. Philips Electronics North America Corp. and Philips Medizin Systeme Boblingen GmbH., Case No. 09-80-LPS-MPT (D. Del. Oct. 17, 2014).  Represented medical-device maker Masimo and led trial team to a complete victory in obtaining a jury verdict of over $466 million for lost-profits damages against Philips for infringing two Masimo patents.  The jury also rejected Philips’s infringement claims seeking $169 million.The parties have since settled where Philips paid Masimo $300M and agreed to integrate Masimo technology in its patient monitors.      
• Applied Medical Resources Corp. v. Tyco Healthcare Group LP d/b/a Covidien, CV 11-01406, (C.D. Cal., July 11, 2014).  Represented medical-device maker and patent owner  Applied Medical Resources, Corp. in an inventorship dispute filed by Covidien and Gaya Ltd.  In a 130-page opinion, the district court ruled in Applied's favor on all claims, holding that no individuals associated with Gaya are inventors on any of the five Applied patents at issue.  All litigation between the parties has since settled.
• Schindler Elevator Corp. v. Otis Elevator Corp., 593 F.3d 1275 (Fed. Cir. 2010). Represented elevator company Schindler and obtained reversal of noninfringement ruling. On remand, obtained a jury verdict that Otis directly and indirectly infringed the patent and that the patent is valid. On second appeal, Federal Circuit invalidated the patent for obviousness. No. 2011-1615 (Fed. Cir. 2012).
• Advanced Thermal Sciences Corp. v. Applied Materials, Inc., SACV 07-1384 JVS (C.D. Cal 2010). Represented BE Aerospace subsidiary ATS, and after a bench trial, won a ruling that AMI breached a joint development agreement by filing ten patent applications on temperature control systems for semiconductor fabrication equipment and that ATS was the sole inventor and owner of other patents. ATS was also awarded its attorney fees.
• Applied Medical Resources Corp. v. United States Surgical Corp., 448 F.3d 1324, reh’g en banc denied, (Fed. Cir. 2006). Represented medical-device maker and patent owner and obtained reversal of noninfringement ruling. After remand, jury verdict of patent validity and no infringement. Affirmed on appeal.
• Applied Medical Resources Corp. v. United States Surgical Corp., 353 F. Supp.2d 1075 (C.D. Cal. 2004), aff'd, 453 F.3d 1356 (Fed. Cir. 2006). In jury trial, represented medical-device maker in obtaining verdict of $43.5 million and a finding that Tyco-Unit U.S. Surgical had willfully infringed patent. The Court upheld the verdict, enhanced the damages, and entered a $64.5 million judgment. The appellate court affirmed the judgment in its entirety.
• Mallinckrodt, Inc. v. Masimo Corp., 2004 U.S. Dist. LEXIS 28518 (C.D. Cal 2004), aff’din part andrev’din part, 2005 U.S. App. LEXIS 19427, 2005 WL 2139867, 147 Fed. Appx. 158, reh’g en banc denied, 2005 U.S. App. LEXIS 24108 (Fed. Cir. 2005), cert. dismissed, 546 U.S. 1162 (2006). In jury trial and on appeal, obtained $134.5 million verdict for owner of four patents on read-through-motion pulse oximeters. Jury found that Covidien-held Nellcor had willfully infringed the four patents, while also finding that client had not infringed a Tyco patent. Before trial, the court dismissed on summary judgment other Nellcor claims and defenses. 254 F. Supp.2d 1140 (Markman), 292 F. Supp.2d 1201, and 293 F. Supp.2d 1102 (C.D. Cal. 2003). The appellate court affirmed a $164.5 million judgment and ordered the entry of a permanent injunction. The case settled for $330 million and future royalties.
• Gart v. Logitech, Inc., 254 F.3d 1334 (Fed. Cir. 2001), cert. denied, 122 S. Ct. 921 (2002). Represented plaintiff patent owner and obtained reversal of noninfringement ruling.  Ruling led to settlement.
• Hunter Douglas, Inc. v. Harmonic Design, Inc., 153 F.3d 1318 (Fed. Cir. 1998), cert. denied, 525 U.S. 1143 (1999).  Argued appeal on various jurisdictional and preemption issues for electronic window-blind manufacturer.

Representative Matters for Accused Infringer/Defendant

• Smith & Nephew, Inc. v. ConforMIS, Inc., IPR2016-01874 (Pat. Trial & Appeal Bd. 2018) Representing petitioner Smith & Nephew in an inter partes review (IPR) trial before the PTAB, successfully obtained a final written decision of unpatentability of all challenged claims in patent on patient-specific instruments for knee replacement surgery.
• Personalized Media Communications, LLC v. Amazon.com and Amazon Web Services, LLC, 161 F. Supp. 3d 325 (D. Del. 2015), aff’d, No. 2015-2008, 2016 WL 7118532 (Fed. Cir. 2016), rehearing denied, (2017).  Represented Amazon and successfully persuaded the district court, on a motion for judgment on the pleadings, to invalidate all seven patents asserted by a non-practicing entity because all of the patents claimed ineligible subject matter.  Obtained complete affirmance from the Federal Circuit.
• Smith & Nephew Inc. v. Rea and Synthes, 721 F.3d 1371 (Fed. Cir. 2013); Dupuy Synthes Prods., LLC v. Smith & Nephew, Inc., Appeal No. 2014-1136 (Jan. 13, 2015). In two appeals before the Federal Circuit, Mr. Re represented Smith & Nephew, which was accused of infringing patents on orthopedic bone plates by subsidiaries of Johnson & Johnson. First, Mr. Re obtained a reversal of a Patent Office reexamination decision upholding the claims and the Federal Circuit held the claims were invalid for obviousness. In a second appeal, the Federal Circuit held that the Patent Office correctly held that the second patent was also invalid for obviousness. These appellate rulings rendered moot all pending litigation concerning these patents.
• St. Jude Medical, Inc. v. Access Closure, Inc., 729 F.3d 1369 (Fed. Cir. 2013). On appeal, represented medical-device maker after it lost a trial and faced a pending injunction for infringing a patent on devices for sealing vascular punctures. Obtained a reversal and a Federal Circuit ruling that patent was not protected by safe-harbor provision and thus was invalid for double patenting.  Ruling led to $320 million sale of client to Cardinal Health in 2014.
• Applied Medical Resources Corp. v. Tyco Healthcare Group LLP, No. 09-CV-176-KFG (E.D. Tex. Oct. 7, 2011). Represented medical-device maker accused of infringing five Tyco patents. After two jury trials on four patents, jury and court ruled that all four patents were invalid and not infringed. First jury found one unchallenged claim infringed and awarded $4.8 million.  Affirmed on appeal.
• Kinetic Concepts, Inc. v. Smith & Nephew, Inc. SA-08-CV-102-RF (W.D. Tex. 2010), rev’d, 688 F.3d 1342 (Fed. Cir. 2012). Represented Smith & Nephew at jury trial and obtained judgment that KCI patents on negative pressure wound therapy were invalid for obviousness. While on appeal, patent holder terminated license with KCI. The Federal Circuit reversed the district court and while on rehearing over right to trial by jury on obviousness, patent holder licensed Smith & Nephew to settle case.
• Typhoon Touch Technologies, Inc. v. Dell, Inc., 659 F.3d 1376 (Fed Cir. 2011). Represented numerous manufacturers of portable computers with touch screens and obtained affirmance of judgment of no patent infringement.
• Kinetic Concepts, Inc. v. Blue Sky Medical Group, 554 F.3d 1010, reh’g en banc denied, (Fed. Cir. 2009). On appeal, obtained affirmance of jury verdict that gauze-based system for negative pressure wound therapy does not infringe patents.
• Heuft Systemtechnik GmbH v. Industrial Dynamics Co., 2008 U.S. App. LEXIS 13486, 2008 WL 2518562 (Fed. Cir. 2008). In jury trial and appeal, represented manufacturer of bottle-inspection equipment accused of patent infringement. After jury trial and verdict of infringement, successfully defeated claims for damages and injunction, and after appeal, defeated all claims of infringement as well.
• Koepnick Medical & Educ. Research Found., L.L.C. v. Alcon Labs., Inc. et al., 347 F. Supp. 2d 731 (D. Ariz. 2004), aff'd, 2005 U.S. App. LEXIS 28880, 2005 WL 3543012, reh’g denied (Fed. Cir. 2005). Representing Bausch & Lomb, Inc. at the district court and on appeal, obtained favorable claim construction and judgment of no infringement against patent owner alleging that LASIK eye surgery infringed patent.
• Princeton Biochemicals, Inc. v. Beckman Coulter, Inc., 411 F.3d 1332 (Fed. Cir. 2005), aff’g 2004 WL 1398227 (D.N.J. 2004). In jury trial and on appeal, represented laboratory-instrument maker, Beckman Coulter, accused of patent infringement. After verdict, obtained ruling that Beckman had not infringed and that the patent was invalid for obviousness and because Beckman was the first inventor. The appellate court affirmed the invalidity ruling.
• Hewlett-Packard Co. v. Mustek Systems, Inc., 99 CV 0351 (S.D. Cal.), aff’d in part andrev’din part, 340 F.3d 1314, reh’g denied (Fed. Cir. 2003). In jury trial and on appeal, successfully represented manufacturer of digital scanners accused of infringing several Hewlett-Packard patents. Client found not liable because the asserted patents were either invalid or not infringed.
• Practice Management Information Corp. v. American Medical Ass’n, 121 F.3d 516, amended, 133 F.3d 1140 (9th Cir. 1997), cert. denied, 524 U.S. 923 & 525 U.S. 810, reh’g denied, 525 U.S. 923 (1998). Represented defendant, a medical-books publisher, and established misuse of AMA copyright.
• Lockwood v. American Airlines, Inc., 50 F.3d 966 (Fed. Cir.), cert. granted, 515 U.S. 1121, vacating right to jury trial, 515 U.S. 1182 (1995), on remand, 107 F.3d 1565 (1997), aff’g 834 F. Supp. 1246 and 847 F. Supp. 777 (S.D. Cal.). Represented American Airlines and established that three asserted patents were invalid and not infringed.  Also, obtained writ of certiorari on right to trial by jury in cases challenging a patent’s validity, causing withdrawal of jury demand, and vacatur of Federal Circuit ruling finding such a right.

Other Noteworthy Cases

• Lewis v. Moore et al., No. 15-13979 (11th Cir. Mar. 30, 2018). Representing Masimo, obtained affirmance of summary judgment of no liability in product-liability and negligence case. Participants in a nationwide study alleged that customized pulse oximeters used in double blind nationwide study were defective because of the manner in which they reported oxygen saturation and that they increased their risk of harm. The Eleventh Circuit held that the plaintiffs had no evidence of any actual injury sufficient to warrant a trial and affirmed summary judgment.
• In re Soetra Wireless, Inc. (Bankr. S.D. Cal. July 18, 2017). Representing Masimo in a bench trial, obtained a judgment that two former employees willfully misappropriated various trade secrets when they stole thousands of documents from Masimo upon leaving the company to join a competitor. As a result, the court enjoined the debtor from using any of the misappropriated materials or the employees in the product design process.
• Ruhe v. Masimo Corp., 14 F.Supp.3d 1342 (C.D. Cal., April 3, 2014). Representing Masimo, persuaded a district court to vacate an arbitration award in a constructive wrongful termination action because of the arbitrator’s “evident partiality.” The award included over $5,000,000 in punitive damages. On appeal, the Ninth Circuit reinstated the award.
• Superior Court for the State of California v. ISD Corp., AAA arbitration (2014).  Representing software vendor at trial and defeated claim brought by the state courts of California that they could terminate client’s supply of case management software despite various termination provisions.  Pending client’s claim for attorney fees as prevailing party.    
• United States ex rel. Ruhe v. Masimo Corp., 977 F.Supp. 2d 981 (C.D. Cal. 2013).  Representing Masimo, obtained summary judgment against a group of former employees who alleged that Masimo caused false claims to the government in connection with its devices which noninvasively measure a patient’s hemoglobin.  The district court rejected relators claims that the devices, known as Pronto, were worthless and thus any governmental payment for reimbursement was a false claim.  The Ninth Circuit affirmed the judgment. 
• Yorkey v. Diab, 601 F.3d 1279 and 605 F.3d 1297 (Fed. Cir. 2010) and Appeal No. 2011-1360 (Fed. Cir. 2012). In three appeals from two patent interferences against Covidien subsidiary Nellcor, represented medical-device maker Masimo and established that it was the first inventor of various algorithms for pulse oximeters to measure through motion. 

Articles

• Quoted in "From NJ to Texas: How The Courts Fared At The Fed. Circ." (February 2018)
• Quoted in "The Biggest Patent Cases of 2017" by Law 360 (December 2017)
• "TC Heartland Complicates Venue For Foreign Defendants," Law 360 (June 2017)
• "Manufacturers May Want to Lease -- Not Sell -- Their Patented Medical Devices,"Medical Device and Diagnostic Industry (MD+DI) (June 2017)
• "Litigating for the Greater Good: Knobbe Martens Lawyer Scores Big Wins,"Of Counsel (March 2015)
• "Why We Need Our Patent System: Masimo, OC’s Shining Example,"Orange County Business Journal (November 2014)
• "Litigator of the Week: Joseph Re of Knobbe Martens," The American Lawyer Litigation Daily (October 2014)
• "Knobbe wins $466.7M for medical tech company," quoted in the Daily Journal (October 2014)
• Co-author, “Gunn v. Minton: The Supreme Court’s Correction of the Federal Circuit’s Overly Broad Assertion of Jurisdiction Over State-Law Claims,” 38 New Matter 5 (No. 1 Spring 2013)
• Co-author, "The Pendulum Has Swung Too Far: Recent Misuse of the Entire Market Value Rule to Limit Reasonable-Royalty Patent Damages," 84 Pat. Trademark & Copyright J. (BNA) 195 (June 1, 2012)
• Law360 Q&A with Knobbe Martens' Joseph Re, Portfolio Media, Inc. (June 2011)
• “In Pfaff Case Court Clarifies On-Sale Bar," Nat’l L.J., Feb. 8, 1999 (I.P. Supp.) at 1.
• “Litigating Under Both Markman Decisions,” 1997 Patent Litigation 283 (Prac. Law Inst.).
• “It’s Elementary: In Warner-Jenkenson, the Supreme court Upholds One Doctrine and Bolsters Another,” L.A. Daily J., Apr. 4, 1997, at 7.
• “On Vacatur: Litigant’s Ability to ‘Wipe Slate clean’ Is Impaired,” L.A. Daily J., Apr. 7, 1995, at 7.
• “Vacating Patent Invalidity Judgments Upon an Appellate Determination of Noninfringement,” 72 J. Pat. & Tm. Off. Soc’y 780 (1991), cited by the Supreme Court of the United States in Cardinal Chem. Co. v. Morton Int’l, Inc. (1993).
• “Using Rule 30(b)(6) for Corporate Depositions,” 3 Prac. Litigator 83 (No. 4) 1992).
• “Parallel Prosecution: Effect of Patent Prosecution on Concurrent Litigation,” 73 J. Pat. & Tm. Off. Soc’y 965 (1991).
•  “Federal Circuit Jurisdiction Over Appeals From District Court Patent Decisions,” 16 AIPLA Q.J., 169 (1988).

Books and Chapters

• Brief Writing and Oral Argument (9th ed. Oceana Pubs. 2005), co-author.
• Cases and Materials on Remedies (6th ed. Foundation Press 2005), junior editor.
• Chapter 186, "Court of Appeals for the Federal Circuit" in 8 West's Federal Forms - National Courts (West Pub. 2002), co-author, with annual pocket part supplements which are up to date.
• Chapter 5, “The Answer and Other Responsive Filings” in Patent Litigation Strategies Handbook (2nd ed. BNA Books 2006), co-author, with annual pocket part supplements which are up to date.

Speeches & Seminars

• "Appellate Strategies for Special Circumstances at the Federal Circuit: Mandamus, Stays and Expedited Appeals", Federal Circuit Bench and Bar Conference, Nashville, Tennessee (June 23, 2016).
• "Emerging Trends in Patent Litigation," USC Gould School of Law 2016 Intellectual Property Institute, Los Angeles, California (February 9, 2016).
• “Recent Supreme Court Patent Case Law Update,” presented at the Intellectual Property Owners Association (IPO) 42nd Annual Meeting in Vancouver, British Columbia (September 8, 2014). 
• “Litigating a Patent-Related Dispute in Court While the USPTO is Reexamining or Reviewing the Same Patent,” presented at the Annual Spring Meeting of the AIPLA in Philadelphia, Pennsylvania (May 15, 2014).
• "From Patents to Porn: The #Blurred Lines Between Intellectual Property #Trolls and Legitimate Intellectual Property Enforcement," presented at Thomas Jefferson School of Law in San Diego, California (October 18, 2013).
• “The Trial Lawyer’s Toolbox,” presented to the 37^th Annual Intellectual Property Institute, IP Law Section, State Bar of California in San Diego, California (November 9, 2012).
• “Patent Prosecution Through The Eyes of a Patent Litigator,” presented to the Washington State Patent Law Association in Seattle, Washington (September 19, 2012).
• “Strategies for Multi-Defendant Patent Cases,” presented at the 2012 AIPLA Electronic and Computer Patent Law Summit in San Diego, California (April 2, 2012).
• “Reasonable Royalty Patent Infringement Damages After Lucent, ResQNet and Uniloc,” presented at the Annual USC IP Symposium in Beverly Hills, CA (March 15, 2012). 
• “Disqualification of Law Firms In Patent Cases,” presented at the Annual Meeting of the AIPLA in Washington D.C. (October 21, 2011).
• “Patent Prosecution Through The Eyes of a Patent Litigator,” presented to the 35^th Annual  Intellectual Property Institute, IP Law Section, State Bar of California in Napa, California (October 29, 2010).
• “Erase the Mystery–Insight in Conducting Voir Dire,” presented to the ABTL 37^th Annual Seminar in Kona, Hawaii (October 21, 2010).
• Advocating Patent Cases With Emotion, presented at the Annual Spring Meeting of the AIPLA in New York, New York, (May 7, 2010). 
• “In Defense of Proving Patent Invalidity by Clear and Convincing Evidence,” presented at the Annual Spring Meeting of the AIPLA in Houston, Texas (May 15, 2008).