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Joseph R. Klinicki

Joseph R. Klinicki is chair of Flaster Greenberg's Intellectual Property (IP) Department. Mr. Klinicki’s practice includes providing strategic guidance to companies developing and monetizing their intellectual property rights, as well as defending against accusations of infringement. He has experience in every stage of the patent life cycle – from initial strategic counseling to enforcement and post‐grant proceedings – and he recognizes the value IP can bring to any business. 

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, computer software, and telecommunications systems. His practice is particularly specialized in the area of obtaining, monetizing, and litigating standards essential patents (SEPs).  

Joseph's patent procurement practice includes global portfolio management responsibilities that have garnered him substantial interaction with the USPTO and all major foreign patent offices. He leverages this understanding of the global state of IP law to advance his clients’ business interests.  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 takes the time to fully understand his clients’ business and technology before devising the appropriate IP strategy. In addition to assisting businesses protect their IP rights, his practice also includes transactional support related to IP transfers, licensing, and due diligence. 

In addition to his patent practice, he represents clients in commercial litigation. A strong advocate for his clients in and out of the courtroom, Mr. Klinicki zealously represents both plaintiffs and defendants in infringement matters, understanding the strategic advantages and potential risks faced by both parties. However, 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. 

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.

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.g., 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 parte re-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), etc.
    • 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.

Events

Admissions

  • Pennsylvania
  • U.S. Patent and Trademark Office
  • U.S. District Court for the Eastern District of Pennsylvania
  • 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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