August 17, 2022

Volume XII, Number 229

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Joshua L. Goldberg

Joshua Goldberg, leader of Finnegan’s PTAB trials section, focuses on inter partes review (IPR), covered business method (CBM), and post-grant review (PGR) proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), and on ensuing appeals to the U.S. Court of Appeals for the Federal Circuit.

As lead or backup counsel in more than 225 IPRs, CBMs, and PGRs, Joshua represents petitioners and patent owners in proceedings involving patents directed to industrial manufacturing, automotive, chemical, software, image processing, consumer electronics, mobile applications, semiconductor, electronic banking, Internet, cloud computing, and medical device technologies. He also coauthors The Practitioner’s Guide to Trials Before the Patent Trial and Appeal Board, ABA, Section of IP Law.

In his PTAB practice, Joshua routinely leads teams of attorneys in simultaneous challenges to or defenses of multiple patents involved in high-stakes litigation. Nearly 50 of the IPRs he’s worked on are associated with International Trade Commission (ITC) cases. Joshua was listed as one of the top eight attorneys representing patent owners and petitioners at the PTAB in 2016, according to Managing Intellectual Property; and one of the top five attorneys at the PTAB in 2015 and 2017, according to Docket Navigator Year in Review.

Joshua complements his PTAB practice with litigation and counseling practices. In his litigation practice, Joshua represents clients in U.S. district courts. In his counseling practice, Joshua helps clients navigate competitors’ intellectual property, providing strategic advice through opinions of counsel on patent infringement, patent validity, and other intellectual property issues. He works with clients to secure their intellectual property with global patent portfolios and counsels them on various matters.

Joshua managed the prosecution of more than 100 patent applications for a manufacturer of drug delivery (e.g., capsule) products. He also managed a special claim drafting project in which Finnegan attorneys worked closely with representatives of a Fortune 100 consumer electronics company to define best practices for drafting and prosecuting patent applications.

Joshua has experience with a variety of mechanical and electrical technologies, including vehicular, industrial manufacturing, mining, computer, Internet, semiconductor, network security, network topology, display, communications, imaging, consumer electronics, and robotics technologies. He has written both application and operating system software, and is familiar with several programming languages, including C, C++, FORTRAN, Intel Assembly, Java, Perl, SQL, and VBA. He has also lectured on electroactive polymers, superchargers, and turbochargers. As part of a senior capstone project at Drake University, Joshua developed computer models to explore performance gains achievable by various methods of coupling a combustion engine with off-the-shelf hybrid vehicle technology.

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Articles in the National Law Review database by Joshua L. Goldberg

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