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OVERVIEW

With 25 years of engineering experience and 15 years in private legal practice, Josh works with technology companies and patent owners in litigation, strategic technology transactions, and global patent portfolio development. Josh has particular recent experience protecting patents against inter partes review challenges.

Josh’s degrees in electrical and mechanical engineering and industry experience at automotive and medical device companies provide a solid foundation for matters involving electrical/electronic hardware, robotics, autonomous vehicles, AR/VR, Industrial IoT, and advanced medical devices.

A former Federal District Court clerk and a graduate of the University of Texas School of Law, Josh represents clients in patent disputes throughout the country, including in key patent law venues such as the Patent Trial and Appeal Board, International Trade Commission, Eastern District of Texas, and Federal district courts throughout California.

Working out of offices in San Jose, New York City, and London, the Haley Guiliano team manages some of the world’s most valuable and complex international technology and life science patent portfolios. Josh regularly works with executives and in-house counsel to integrate company processes with HG’s industry-leading patent systems, resulting in significant improvements to ROI on patent spend.

Representative Matters –

  • NHK Spring Co. Ltd. v. Intri-Plex Technologies, Inc., IPR2018-00752 (PTAB) – Represented patent owner in inter partes review challenge to U.S. Patent No. 6,183,841 related to hard disk drive technology. In a precedent-setting decision, the Patent Trial and Appeal Board denied institution in view of the Petitioner’s similar prior art and the advanced District Court trial schedule.
  • CircusTrix et. al. v. Cherokee Grey Eagle IP et al., IPR2019-00263 (PTAB) – Lead counsel for patent owner Rebounderz in inter partes review challenge to U.S. Patent No. 8,764,575 related to integrated large-scale trampoline arena. The PTAB denied institution on the merits after finding persuasive the patent owner’s arguments that the Petition failed to disclose numerous elements of the patented trampoline arena.
  • Datatrak Int’l Inc. v. Medidata Solutions, Inc., 11-cv-00458 (N.D. Ohio) – Served as special master on technical patent issues in litigation relating to medical database technology.
  • Rebounderz Franchise and Development, et al. v. Sky Zone LLC, et al., 6:18-cv-00355 (M.D. Fla.), Rebounderz Franchise and Development, et al. v. CircusTrix, LLC, et al., 6:18-cv-00356 (M.D. Fla.), and Rebounderz Franchise and Development, et al. v. Rockin’ Jump, LLC, et al., 0:18-cv-60502 (S.D. Fla.) – Represented inventor-owned trampoline arena operator and patentee in patent infringement litigation against large private equity owned franchisor and owner of 300+ trampoline arenas. Case settled following successful defense of patent in inter partes review.
  • In re Certain Microelectromechanical Systems (MEMS Devices) and Products Containing Same, Inv. 337-TA-876 (International Trade Commission) – Brought in 3 months before trial to lead technical aspects of case, represented accused infringer in litigation involving importation of microelectromechanical accelerometers in gyroscopes used in smart phones and other consumer devices. Case settled during first week of trial.
  • Developed foundational high-security communications hardware patent portfolio for multiple product launches through unicorn growth and public company launch.
  • Developed US and international patent strategy and internal systems for a large and diversified manufacturing company.

Memberships & Affiliations

    • San Francisco Bay Area Intellectual Property Inns of Court
    • Post-Grant Patent Office Practice Committee – Intellectual Property Owners Association
    • Patent Trial and Appeal Board (PTAB) Bar Association