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Joseph R. Klinicki

Joseph R. Klinicki is chair of Flaster Greenberg's Intellectual Property Department. Mr. Klinicki’s practice is focused on providing strategic guidance to companies developing and monetizing their intellectual property rights. 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 strong interest in developing technologies has resulted in his keen understanding of multiple technological areas. He is well‐versed in computer networking, artificial intelligence, electronics, cloud computing, optical lenses and optical signal processing, data security/cryptography, lasers, LED emission and structure, computer software, and telecommunications systems. His practice is particularly specialized in the area of obtaining and monetizing standards essential patents (SEPs).  

Joseph's patent procurement practice includes global portfolio managing 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. 

Mr. Klinicki takes the time to fully understand his clients’ business and technology systems 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 and licensing. 

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 IP property owners as both plaintiffs and as 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. 

Mr. Klinicki earned his J.D. from the University of Texas Law School, with honors, and his B.S. from Penn State in electrical engineering with honors and high distinction.

Representative Matters

  • Experience prosecuting and managing portfolios related to:
    • telecommunications technology, including 3G WCDMA, 4G LTE, 5G NR, and 802.11;
    • computer software, including artificial intelligence (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, lens, and laser diode designs for holographic systems; and
    • lasers for use in LiDAR systems that operate at human eye safe wavelengths.
  • Experience supporting litigation and licensing efforts during prosecution of clients’ patent portfolios.
  • Experience in post-grant validity procedures worldwide, including U.S. inter-partes review and ex-parte reexamination, EPO opposition proceedings, and Chinese Invalidation Proceedings.
  • Experience litigating cases involving Light Emitting Diodes and LED packaging involving optical properties, including the LED structures for emitting light as well as the packaging for extracting light. Litigated issues related to light transmission, optical properties (refraction, reflection, scattering, transmission, and absorption) tested products for optical properties.  
  • Experience working on cases involving laser technology, including laser design and optical component optimizations.
  • Location Based Services, LLC v. Mapillary Inc. (1:18-cv-01425), District of Delaware
    • Successfully defended Mapillary Inc. in a patent infringement action brought by Location Based Services, LLC over alleged infringement of U.S. Patent No. 8,311,733. Mr. Klinicki was able to quickly and efficiently extract Mapillary from the suit by successfully invalidating the patent under 35 USC § 101 via a motion to dismiss.
  • Experience defending clients both in district court and at the U.S. International Trade Commission (ITC) from both competitor suits and from patent trolls.

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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