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About Joseph

Joseph V. Colaianni is a Principal in the Washington, DC, office of Fish & Richardson. Mr. Colaianni’s practice has a particular focus on litigating Section 337 proceedings before the U.S. International Trade Commission. Mr. Colaianni is very experienced in virtually all aspects of Section 337 actions, including due diligence and filing, discovery and hearings, enforcement proceedings, and has served as lead counsel and handled the day-to-day oversight of numerous Section 337 actions. Mr. Colaianni has conducted over ten evidentiary hearings (trials) at the ITC since 1996. Mr. Colaianni has also litigated patent infringement cases in federal district courts throughout the country, including jury and bench trials. In 2013, Mr. Colaianni was an integral part of a litigation team that achieved a verdict of non-infringement from a jury in Marshall, Texas.

Prior to joining Fish & Richardson, Mr. Colaianni served as a patent examiner at the U.S. Patent & Trademark Office, examining patent applications relating to electronic imaging devices, including charge coupled devices and digital camera technology.

Mr. Colaianni was selected for inclusion as a “leading patent practitioner” in the 2013-2014 and 2016-2020 editions of IAM Patent 1000 for National Patent Prosecution and Litigation Practices. In the 2020 edition of IAM Patent 1000, Mr. Colaianni was recognized as a leading attorney at the International Trade Commission. He was also selected for inclusion in the 2021 “Best Lawyers in America” list by The Best Lawyers in America©.

Speaking Engagements

Panelist “The 100-Day Proceedings at the ITC,” China Ministry of Commerce (June 7, 2017 – Beijing and June 9, 2017 – Nanjing)

Section 337 Investigations – International Trade Commission:

Certain Multi-Domain Test and Measurement Instruments (Inv. No. 337-TA-1104) – Lead counsel for Respondents Rohde & Schwarz GmbH & Co. KG, Rohde & Schwarz Vertriebs GmbH, and Rohde & Schwarz USA, Inc. in a patent infringement action relating to test and measurement instruments.  Trial scheduled for October 2018.

Certain Semiconductor Devices and Consumer Audiovisual Products Containing Same (Inv. No. 337-TA-1047) – Represented Respondents MediaTek Inc., MediaTek USA Inc., and MStar Semiconductor Inc. in a patent infringement action involving video processing technology.  Case resolved via favorable settlement.

Certain Graphics Processors, DDR Memory Controllers, and Products Containing the Same (Inv. No. 337-TA-1037) – Represented Respondents MediaTek Inc. and MediaTek USA Inc. in a patent infringement action involving graphics processors and DDR memory controllers.  Case resolved via favorable settlement.

Certain Access Control Systems and Components Thereof (Inv. No. 337-TA-1016) – Represented Complainant The Chamberlain Group, Inc. in a patent infringement action involving garage door opener systems.  Obtained a finding of violation of Section 337 and imposition of limited exclusion orders and cease and desist orders barring importation and sale of Respondents’ infringing access control systems.

Certain Automated Teller Machines, ATM Modules, Components Thereof, and Products Containing the Same (USITC 337-TA-989) – Represented Complainant Hyosung against Diebold in patent litigation concerning a wide array of technologies associated with Automated Teller Machines.   ALJ found a violation of Section 337 by Respondent Diebold.

Certain Devices Containing Non-Volatile Memory and Products Containing The Same – 337-TA-922 – Representing complainants Macronix International Co., Ltd. and Macronix America, Inc. in a patent infringement action relating to non-volatile memory technology.

Certain Non-Volatile Memory Chips and Products Containing the Same – 337-TA-916 – Representing respondents Macronix International Co., Ltd. and Macronix America, Inc., Macronix Asia Ltd. of Japan, Macronix (Hong Kong) Co., Ltd. of Hong Kong, and Macronix’s customers in a patent infringement action relating to non-volatile memory technology.

Certain Consumer Electronics, Including Mobile Phones and Tablets II – 337-TA-905 – Represented respondents Samsung Electronics Co., Ltd. and Samsung’s U.S. subsidiaries in a patent infringement action relating to wireless communications technology. Resolved successfully via settlement.

Certain Electronic Devices, Including Wireless Communication Devices, Tablet Computers, Media Players, and Televisions, and Components Thereof – 337-TA-862 – Represented respondents Samsung Electronics Co., Ltd. and Samsung’s U.S. subsidiaries in a patent infringement action relating to wireless communications technology. Resolved successfully via settlement.

Certain Sintered Rare Earth Magnets, Methods of Making Same and Products Containing Same– 337-TA-855 – Lead counsel for respondent Harman International in a patent infringement action relating to sintered rare earth magnets. Resolved successfully via settlement.

Certain Electronic Devices with Communication Capabilities, Components Thereof, and Related Software– 337-TA-808 – Represented respondent Apple Inc. in a patent infringement action relating to mobile electronic communications devices. Resolved successfully via settlement.

Certain Consumer Electronics, Including Mobile Phones and Tablets – Inv. No. 337-TA-839 – Represented respondents Samsung Electronics Co., Ltd. and Samsung’s U.S. subsidiaries in a patent infringement action relating to mobile communications technology. Resolved successfully via settlement.

Certain Electronic Devices Having a Retractable USB Connector– 337-TA-843 – Represented respondents Samsung Electronics Co., Ltd. and Samsung’s U.S. subsidiaries in a patent infringement action relating to electronic devices having USB connectors. Resolved successfully via settlement.

Certain Portable Communication Devices – 337-TA-827 – Represented respondents Samsung Electronics Co., Ltd. and Samsung’s U.S. subsidiaries in a patent infringement action relating to mobile electronic communications technology. Resolved successfully via settlement.

Certain Coenzyme Q10 Products and Methods of Making Same – 337-TA-790 – Represented respondent Mitsubishi Gas Chemical Co., Inc. in a patent infringement action relating to the coenzyme Q10. Obtained a finding of no infringement after trial.

Certain Lighting Control Devices Including Dimmer Switches and Parts Thereof – Inv. No. 337-TA-776 – Lead counsel for respondent Pass & Seymour in a patent infringement action relating to dimmer switches. Resolved via consent order.

Certain Flash Memory Chips and Products Containing Same – 337-TA-735 – Represented respondents Samsung Electronics Co., Ltd., Samsung’s U.S. subsidiaries, and Samsung customers in a patent infringement action relating to flash memory technology. Resolved successfully via settlement.

Certain Liquid Crystal Display Devices and Products Containing Same – 337-TA-699 – Representing complainant Samsung Electronics Co., Ltd. in a patent infringement action relating to liquid crystal displays. Resolved successfully via settlement.

Certain Mobile Telephones and Wireless Communication Devices Featuring Digital Cameras, and Components Thereof – 337-TA-663 – Represented respondent LG Electronics in a patent infringement action relating to digital camera technology. Resolved successfully via settlement.

Certain Liquid Crystal Display Modules and Products Containing the Same, and Methods for Using the Same – 337-TA-634 – Representing Samsung respondents in a patent infringement action relating to liquid crystal displays. Resolved successfully via settlement.

Certain Liquid Crystal Display Devices and Products Containing the Same – 337-TA-631 – Represented complainant Samsung Electronics Co., Ltd. in a patent infringement action relating to liquid crystal displays. Obtained a limited exclusion order and cease & desist order against respondent Sharp Corporation. Resolved successfully via settlement.

Certain Unified Communication Systems, Products Used With Such Systems, and Components Thereof – 337-TA-598 – Represented complainant Microsoft Corporation in a patent infringement action adverse to Alcatel-Lucent. Obtained a violation of section 337 by the Administrative Law Judge. Case resolved via settlement.

Certain Network Controllers and Products Containing Same – 337-TA-531 – Represented complainant Marvell Semiconductor in a patent infringement action relating to Ethernet network controllers. Resolved successfully via settlement.

Certain Recordable Compact Discs and Rewritable Compact Discs – 337-TA-474 – (CD-R and CD-RW discs) Successfully defended respondents Princo Corporation and Gigastorage Corporation against patent infringement allegations by Philips. The Administrative Law Judge and unanimous decision by the ITC Commission held that Philips committed patent misuse, thereby rendering all six asserted patents unenforceable. The patent misuse violation was based on Philips’ patent pool license agreements and mandatory package licenses. This case was the first patent misuse finding by the ITC Commission. The ITC ruling was later modified on appeal.

Certain Abrasive Products Made Using A Process For Making Power Preforms, And Products Containing Same – 337-TA-449 – Obtained limited exclusion order and cease & desist order on behalf of complainant 3M against Kinik Co. in a patent infringement action relating to diamond abrasive tools.

Certain Synchronous Dynamic Random Access Memory Devices, Microprocessors and Products Containing Same – 337-TA-431 – Represented complainant Rambus against Hitachi in a patent infringement action relating to memory architecture. Case ended in favorable settlement for Rambus.

Certain Digital Satellite System (DSS) Receivers and Components Thereof– 337-TA-392 – Represented complainant Personalized Media Communications L.L.C.in a patent infringement action relating to digital satellite communications technology. Resolved after hearing via settlement.

District Court Actions

Oyster Optics, LLC v. Infinera Corporation – (E.D. Tex.) – Defending Infinera Corporation in a patent infringement lawsuit relating to optical networking equipment.

Progressive Semiconductor Solutions LLC v. Marvell Semiconductor, Inc. – (C.D. Cal.) Represented defendant Marvell in a patent infringement action involving semiconductor memory technology. Case resolved via favorable settlement.

Cambrian Science Corp. v. Cox Communications, Inc. et al.– (C.D. Cal.) Obtained summary judgment of non-infringement on behalf of defendants in a patent infringement action relating to optical networking technology. Also obtained a finding of exceptional case under 35 U.S.C. §285 and an award of attorneys’ fees.

Lake Cherokee Hard Drive Technologies LLC v. Marvell Semiconductor, Inc. – (E.D. Tex.) – Obtained a jury verdict of non-infringement on behalf of defendant Marvell in a patent infringement action relating to hard drive controller technology.

FastVDO LLC v. Grass Valley USA, LLC – (D. Del.) – Defended Grass Valley in a patent infringement action relating to H.264 video compression technology. Case resolved via favorable settlement.

Reporting Technologies, Inc. v. Emma, Inc. – (E.D. Va.) – Represented Reporting Technologies in a patent infringement action relating to business intelligence software. Case resolved via favorable settlement.

Monec Holding AG v. Motorola Mobility, Inc. et al. – (D. Del.) – Defended Samsung in a patent infringement litigation relating to mobile communication devices. Case resolved via favorable settlement.

Broadcom Corp. v. Emulex Corp. – (C.D. Cal.) – Defended Emulex in a patent infringement matter relating to circuitry for telecommunications networks. Case resolved after jury trial via settlement.

Advanced Processor Technologies, LLC v. Analog Devices, Inc. et al. – (E.D. Tex.) – Defended Marvell Semiconductor Inc. in a patent infringement matter relating to cache memory technology. Case resolved via favorable settlement after claim construction.

Intravisual, Inc. v. Fujitsu Microelectronics America, Inc. – (E.D. Tex.) – Defended Samsung in a patent infringement matter relating to H.264 video coding technology. Case resolved via favorable settlement.

Internet Machines LLC v. Nvidia Corp. et al. – (E.D. Tex.) – Defended Nvidia in a patent infringement action relating to high-speed computer expansion card connections. Case resolved via stipulated dismissal of Nvidia.

Vigilos, LLC v. Cisco Systems, Inc., et al. – (E.D. Tex.) – Defended Intel Corp. in a patent infringement action relating to remote monitoring software. Won motion to transfer case to the Northern District of California, where it was dismissed.

Aloft Media, LLC v. Compuware Corp. et al. – (E.D. Tex.) – Defended Infinera Corp. in a patent infringement action relating to decision-making software. Case resolved via stipulated dismissal of Infinera.

Maxim Integrated Products, Inc. v. Anpec Electronics Corp. – (N.D. Cal.) – Represented Maxim in a patent infringement action relating to audio hardware. Case resolved via favorable settlement.

Vizio, Inc. v. LG Electronics, Inc. – (D. Md.) – Defended LGE in a patent infringement matter relating to digital television technology. Case resolved via favorable settlement.

Fujitsu Hitachi Plasma Display, Ltd. v. LG Electronics, Inc. – (N.D. Cal.) – Defended LGE in a patent infringement matter relating to plasma television technology. Case resolved via favorable settlement.

Synopsys, Inc. v. Magma Design Automation, Inc. – (D. Del.) – Defended Magma in a patent infringement action relating to electronic design automation software. Case resolved via settlement.

Computer Cache Coherency Corporation v. Intel Corporation – (N.D. Cal.) – Defended Intel in patent infringement action relating to cache memory technology. Won summary judgment of non-infringement.

Sharp Corporation v. Samsung Electronics Co., Ltd. et al. – (E.D. Tex.) Defended Samsung in litigation involving liquid crystal display technology. Case resolved via settlement.

Cheetah Omni, LLC v. Level 3Communications, Inc. & Infinera Corporation – (E.D. Tex.) Represented defendants Infinera and Level 3 Communications in a patent infringement action involving optical networking technology. Case was resolved via a favorable settlement after claim construction.

Toshiba Corporation v. Juniper Networks, Inc et al. – (D.Del.) Successfully defended Juniper in litigation involving Internet router technology; judgment of non-infringement affirmed by the Court of Appeals for the Federal Circuit (2007).

D-Link Systems, Inc. adv. 3Com Corp. (N.D. Cal.) Defended D-Link in a patent infringement case brought by 3Com in the Northern District of California involving network interface controller products. Case settled favorably for D-Link.

Marvell Semiconductor, Inc. adv. Realtek Semiconductor Corp. – (N.D. Cal.) Defended Marvell Semiconductor in a patent infringement suit brought by Realtek Semiconductor in the Northern District of California relating to Ethernet networking devices. In a published decision, obtained a dismissal with prejudice and an award of more than $500,000 in attorneys’ fees for Marvell.

Summit Chemical Co. v. Bonide Products, Inc. (N.D. NY 2004) Represented Summit Chemical in a trademark infringement action relating to Summit’s “Mosquito Dunks” registered mark for biological insecticides for agricultural and domestic uses. Case resolved successfully via settlement.

CIENA Corp. v. Corvis, Inc. – (D.Del. 2003) Tried and won jury verdicts of infringement and validity in patent infringement case relating to dense wave division multiplexing optical communications systems. Case settled after injunction issued.

Intergraph v. Intel Corporation – (E.D.Tex. 2002) Defended patent infringement action relating to parallel processing microprocessors. Adverse decision at the trial court, case settled favorably after reversal of trial court on appeal.

MCI Corp. v. AT&T Am. Transtech, Inc. – (E.D. Pa. 1998) telecommunications case, defended patent infringement claims brought by MCI against AT&T, American Transtech, and Universal Card Services.

Intergraph Corp. v. Intel Corp. – (N.D. Ala. 1997) microprocessor case, defended patent infringement claims brought by Intergraph against Intel.

Pro Bono Activity

Mr. Colaianni provides pro bono representation to claimants before the U.S. Court of Appeals for Veterans Claims.

Named to “The Best Lawyers in America” list by The Best Lawyers in America© (2021).

“Joseph Colaianni is an excellent advocate, effective trial lawyer and trusted colleague.”

— 2019 IAM Patent 1000

Focus Areas
Education

J.D. with honors, George Washington University Law School (1996) Member, AIPLA Law Journal


B.S. cum laude, Tau Beta Pi, Eta Kappa Nu, Electrical Engineering, University of Maryland (1991)

Admissions
  • U.S. Patent and Trademark Office 1996
  • District of Columbia 1997
  • Virginia
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. District Court for the Eastern District of Texas
  • U.S. District Court for the Eastern District of Virginia
Memberships & Affiliations

​Member: American Bar Association, American Intellectual Property Law Association, ITC Trial Lawyers Association.

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