Joseph A. Micallef
Partner
With more than 30 years of experience, Joe Micallef has built a reputation as a trusted advocate for clients in intellectual property disputes involving cutting-edge technologies. His experience includes navigating complex litigation involving artificial intelligence, 3D memory, cellular technology, reconfigurable computing systems, computer microarchitectures, operating systems, search engines, semiconductor fabrication techniques, satellite television, and solar cell design. Joe has litigated cases before federal district and appellate courts, federal agencies (including both the ITC and the PTAB), and arbitration panels, handling all phases of litigation from pre-litigation strategy through trial and appeal.
Joseph A. Micallef
Partner
With more than 30 years of experience, Joe Micallef has built a reputation as a trusted advocate for clients in intellectual property disputes involving cutting-edge technologies. His experience includes navigating complex litigation involving artificial intelligence, 3D memory, cellular technology, reconfigurable computing systems, computer microarchitectures, operating systems, search engines, semiconductor fabrication techniques, satellite television, and solar cell design. Joe has litigated cases before federal district and appellate courts, federal agencies (including both the ITC and the PTAB), and arbitration panels, handling all phases of litigation from pre-litigation strategy through trial and appeal.
Joe represents clients, both large and small, on intellectual property enforcement and defense strategies, including investigating potential infringement and asserting IP rights in courts across the country, and defending against the assertion of IP rights by others. He is the leader of Axinn’s Post Grant Procedures practice, representing clients in nearly 200 inter partes review proceedings under the America Invents Act.
Beyond his practice, Joe teaches Trade Secret and Patent Law as an adjunct professor at Georgetown University Law Center, and has done so for over twenty years. Before entering private practice, he clerked for Justice Joseph T. Walsh of the Delaware Supreme Court, gaining experience in corporate and business law. An accomplished author, he has co-edited two editions of Duvall’s Unfair Competition and the ITC and has authored several articles on patent-related topics.
Experience
- In re Certain Memory Modules and Components Thereof; Netlist, Inc. v. SK Hynix, Inc. – Represented SK Hynix in two ITC investigations and three district court litigations, and as Lead Counsel in twenty IPR proceedings relating to patents allegedly drawn to SEP memory module technology.
- Interdigital Technology Corp. v. Lenovo Holdings Co., Inc. – Represented Lenovo in district court litigation, and as Lead Counsel in related IPR proceedings involving eight patents allegedly drafted to SEP cellular technology.
- Surfcast, Inc. v. Microsoft Corp., (WDWA) – Lead Counsel. Represented Microsoft in patent infringement case concerning Microsoft’s Windows operating system.
- SRC Labs, Inc. v. Microsoft Corp. – Represented Microsoft as Lead Counsel in district court litigation and related IPR proceedings involving six patents drawn to reconfigurable computing architectures.
- Improved Search Inc. v. Microsoft Corp. – Represented Microsoft as Lead Counsel in district court litigation and related IPR proceedings involving two patents drawn to mutli-lingual web search.
- O’Brien v. Microsoft Corp. – Represented Microsoft as Lead Counsel in IPR proceeding involving patent drawn to content streaming.
- Synkloud v. Microsoft Corp. – Represented Microsoft as Lead Counsel in eight IPR proceedings involving patents drawn to remote storage systems.
- Iron Oak v. Microsoft Corp. – Represented Microsoft as Lead Counsel in two IPR proceedings involving patents drawn to network technologies.
- In Intellectual Ventures’ first lawsuits against the insurance industry, Lead Counsel in eight inter partes review proceedings and two covered business method proceedings filed against the asserted patents, purportedly claiming database, computer networking, and mobile applications technologies. (Western District of Pennsylvania.)
- HTC Corp. et al. v. Parthenon Unified Memory Architecture LLC. – Lead Counsel. Represented HTC in inter partes review proceedings concerning five patents directed to video compression systems.
- Evolved Wireless, LLC v. Microsoft Corp. et al. (D.DE) – Lead Counsel. Represented Microsoft in patent infringement case concerning LTE random access technology.
- InterDigital Comm. Inc. et al v. Nokia Corp. et al. (D.DE) – Represented Nokia Inc. and Microsoft Mobile Oy in patent infringement case involving Nokia mobile phones and Microsoft tablets.
- Microsoft Corp. v. IPR Licensing, Inc., IPR2015-00074 – Lead Counsel. Represented Microsoft in inter partes review proceedings concerning patent directed to a dual mode cellular device.
- Microsoft Corp. v. Parallel Networks Licensing, LLC., IPR2015-00483, 484, 485 and 486 – Lead Counsel. Represented Microsoft in inter partes review proceedings concerning server technology patents.
Honors
- IAM Patent 1000, World’s Leading Patent Professionals (2022 – 2024)
- Recognized in Managing IP’s IP Stars (2022 – 2024)
Education
- JD – University of Virginia School of Law (1991)
- BS, Electrical Engineering – Catholic University of America (1988)
Admissions
- District of Columbia
- U.S. Patent & Trademark Office
Quotes
They have a good understanding of the client’s needs, as well as excellent scientific and legal knowledge.
Chambers USA
Axinn's team is always responsive and available. They know the space and deliver to a high level.
Chambers USA
