Joseph R. Klinicki, a Shareholder at Flaster Greenberg, is the immediate-past chair of Flaster Greenberg's Intellectual Property (IP) Department, and he now serves as a member of the firm’s Board of Directors. Mr. Klinicki’s practice involves counseling clients in all aspects of intellectual property law, including providing strategic guidance to companies developing, monetizing, and enforcing their IP rights, as well as defending against accusations of infringement.
Mr. Klinicki represents clients in all manners of IP disputes and transactions. His patent procurement practice includes global portfolio management responsibilities that have garnered him substantial interaction with the United State Patent and Trademark Office (USPTO) and all major foreign patent offices. He leverages this understanding of the global state of IP law to advance his clients’ business interests, and Mr. Klinicki’s clients look to him as their go-to advisor for developing effective strategies for protecting their IP worldwide. He also has substantial experience in both offensive and defensive post-grant validity proceedings, including as lead counsel for U.S. inter partes reviews (IPRs), as well as managing foreign counsel in European opposition and Chinese invalidation proceedings.
Mr. Klinicki has also helped his clients monetize their IP through licensing, both in the context of litigation enforcement campaigns and in technology transfer business transactions. He routinely helps his clients manage worldwide, multi-jurisdictional enforcement campaigns, where he has coordinated strategies and tactics such that his clients can enforce and license their worldwide IP rights. Mr. Klinicki also represents technology implementers in licensing negotiations and other IP disputes, where his understanding of the IP landscape helps him secure efficient outcomes for his clients in in several high-tech industries.
In addition to his transactional patent practice, Mr. Klinicki has a substantial litigation practice where he represents clients in IP and contract litigation. A strong advocate for his clients in and out of the courtroom, Mr. Klinicki zealously represents both plaintiffs and defendants in IP matters, including patent infringement actions in U.S. District Court, unfair trade practice proceedings before the U.S. International Trade Commission, and trade secret litigation in federal and state courts. Though Mr. Klinicki maintains a high record of success in the courtroom, he never loses sight of the need to handle disputes efficiently and in a cost‐effective manner with an eye towards his clients’ business goals, resolving disputes before they go to trial whenever feasible.
Mr. Klinicki’s interest in developing technologies has resulted in his keen understanding of multiple high-tech industries. He is well‐versed in computer networking, artificial intelligence, electronics, cloud computing, optical lenses and optical signal processing, data security/cryptography, lasers, light emitting diode (LED) fabrication and structure, wireless power transfer, computer software, and telecommunications systems. His practice is particularly specialized in the area of obtaining, monetizing, and litigating standards essential patents (SEPs).
Mr. Klinicki earned his J.D. from the University of Texas Law School, with honors, and his B.S. in Electrical Engineering from the Penn State Schreyer Honors College, with high distinction.
- 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.
Honors & Awards
- Named a Pennsylvania “Rising Star” in the area of Intellectual Property Law, 2022 & 2023, by Thomson Reuters, publishers of Pennsylvania Super Lawyers magazine
- Chambers USA Ranks Flaster Greenberg's Intellectual Property Department for Outstanding Legal Work in PennsylvaniaPress Release()
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- Ten Flaster Greenberg Attorneys Honored by Thomson Reuters as 2022 Pennsylvania “Super Lawyers” and “Rising Stars”Press Release()
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- Intellectual Property Department Continues to Grow at Flaster Greenberg; Welcomes Seven Additional Patent Group MembersPress Release()
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- Association of Corporate Counsel, IP Institute()
- 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
- University of Texas School of Law, J.D., with honors
- The Pennsylvania State University, B.S., Electrical Engineering, with honors and high distinction