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Joseph R. Klinicki

Shareholder Joseph R. Klinicki is a member of the firm’s Board of Directors and immediate past chair of the Intellectual Property Department. He focuses his practice on advising technology companies on the development, licensing, monetization, and enforcement of intellectual property portfolios, with a particular focus on standard essential patent (SEP) portfolios, portfolio-level licensing strategy, FRAND issues, and global patent litigation.

Joseph has extensive experience counseling clients on worldwide patent portfolio licensing, representing both patent owners pursuing assertion and monetization strategies and technology implementers negotiating licenses and managing infringement risk. His practice is especially concentrated on licensing programs involving standards-based technologies, where he advises on FRAND considerations, portfolio valuation, negotiation strategy, and enforcement posture across multiple jurisdictions.

A core component of Joseph’s practice is patent litigation and coordinated global infringement campaigns. He routinely represents clients in multi-jurisdictional patent infringement matters, acting both for plaintiffs asserting international patent portfolios and for defendants facing parallel actions in the United States and abroad. He regularly aligns litigation strategy with licensing and business objectives, ensuring that enforcement activity supports broader portfolio monetization or risk-management goals. This experience on both the plaintiff and defense sides informs a practical, business-focused approach to litigation and settlement strategy.

Joseph also advises clients on global patent portfolio management, with substantial interaction with the U.S. Patent and Trademark Office and major foreign patent offices. He integrates prosecution strategy with licensing and litigation considerations to maximize leverage and efficiency worldwide. In addition, Joseph has significant experience in post-grant patent validity proceedings, including serving as lead counsel in U.S. inter partes reviews (IPRs) and coordinating European opposition and Chinese invalidation proceedings.

Joseph’s multi-forum enforcement and licensing campaign experience includes coordinating litigation, licensing negotiations, post-grant challenges, and portfolio development to advance clients’ commercial objectives. He also represents technology implementers in licensing negotiations and related IP disputes, where his understanding of both assertion-side and defense-side dynamics enables him to secure efficient, commercially sound outcomes.

Alongside his transactional and counseling practice, Joseph maintains an active litigation practice representing plaintiffs and defendants in patent infringement, trade secret, and contract disputes in U.S. district courts, before the U.S. International Trade Commission, and in state courts. While he is an experienced courtroom advocate, Joseph emphasizes disciplined case management and early strategic positioning, with an eye toward efficient resolution aligned with his clients’ business goals.

Joseph’s technical background spans a wide range of high-technology fields, including telecommunications systems (3G, 4G LTE, 5G NR, Wi-Fi), computer networking, artificial intelligence, cloud computing, software systems, data security and cryptography, optics and optical signal processing, lasers, LEDs, wireless power transfer, and computer vision. His practice is particularly concentrated on the acquisition, licensing, monetization, and litigation of standards essential patents.

Representative Matters

  • Experience prosecuting and managing portfolios related to:
    • Telecommunications technology, including 3G WCDMA, 4G LTE, 5G NR, and 802.11 (Wi-Fi)
    • Computer software, including artificial intelligence (e., software implementing various neural networks and other machine learning technology), data security, graphical user interfaces (GUIs), software-based cloud databases, and other software features 
    • Optical signaling processing, for example involving software and hardware techniques for performing laser modulation, variable optical attenuation and time delay, optical amplification, etc.
    • Optical structures, such as volume bragg gratings (VBGs), optical sights, and other scopes, including reflectors, lenses, and laser diode designs for holographic systems
    • Lasers for use in LiDAR systems that operate at human eye safe wavelengths
    • Computer vision and three-dimensional imaging software
    • Wireless power transfer and battery charging
    • Industrial control systems and processes
  • Experience supporting litigation and licensing efforts during prosecution of clients’ patent portfolios.
  • Experience in post-grant validity procedures worldwide, including U.S. IPRs and ex partere-examination, U.S. reissue applications, EPO opposition proceedings, and Chinese Invalidation Proceedings.
  • Experience litigating patent and trademark claims in various venues including in U.S. District Court and at the U.S. International Trade Commission (ITC).  Example technologies include:
    • LEDs and LED packaging
    • SEPs for wireless communication systems such as 3GPP cellular telecommunication, WiFi access points and devices, wireless power transfer (Qi), 
    • Computer software systems including cloud-based software applications, retail and online systems, smartphone apps and back-end systems
    • Radio frequency identification and related software systems  
  • Experience working on cases involving laser technology, including laser design and optical component optimizations.
  • Named to SJ Mag Media’s Attorney Resource List, Intellectual Property, 2025
  • Named a Pennsylvania “Rising Star” in the area of Intellectual Property Law, 2022 - 2024, by Thomson Reuters, publishers of Pennsylvania Super Lawyers magazine

Events

Admissions

  • Pennsylvania
  • U.S. Patent and Trademark Office
  • U.S. District Court for the Eastern District of Pennsylvania
  • U.S. District Court for the Eastern District of Texas
  • U.S. District Court for the Western District of Texas
  • U.S. Court of Appeals for the Federal Circuit

Education

  • University of Texas School of Law, J.D., with honors
  • The Pennsylvania State University, B.S., Electrical Engineering, with honors and high distinction
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