Joseph Hamilton

Partner

Los Angeles

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310.788.3271 direct

JHamilton@perkinscoie.com

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Joe has devoted more than 20 years to guiding life science and technology companies through their most significant patent disputes.

Based in the firm's Los Angeles office, Joe Hamilton has been recognized by Intellectual Asset Management in the IAM Patent 1000 and as a Rising Star by Super Lawyers Magazine. Following the implementation of the America Invents Act (AIA), Joe has developed a comprehensive litigation approach for his clients, managing and coordinating litigation in federal district courts, the U.S. International Trade Commission, and the U.S. Patent and Trademark Office (USPTO), where Joe has been ranked for most active matters and best performance in the IPR space in Patexia's 2019 IPR Intelligence Report.

In addition to litigating, Joe counsels companies and research institutions on the establishment, development, and maintenance of patent portfolios in a variety of technologies including drug delivery and medical devices, computer hardware and software, and chemical and drug processing and manufacturing. Joe's representative clients range from startups and venture-backed companies to members of the Fortune 500.

Joe is also an active member of the American Institute of Chemical Engineers and the University of Southern California Law School Alumni Association, where he mentors rising law students interested in patent law.

Areas of focus

Industries

Biotechnology & Pharmaceutical

Retail & Consumer Products

Medical Device

Life Sciences & Healthcare

Services

Patent Litigation

Intellectual Property Law

Patent Prosecution & Portfolio Counseling

Post-Grant Proceedings

ITC Litigation

Education & Credentials

Education

USC Gould School of Law, J.D., Articles Editor, Southern California Law Review, 1999 - 2000, 2000
University of Southern California, M.S., Chemical Engineering, 1997
University of Southern California, B.S., Chemical Engineering, 1995

Bar and Court Admissions

California
U.S. Patent and Trademark Office

U.S. Court of Appeals for the Ninth Circuit
U.S. Court of Appeals for the Federal Circuit
U.S. District Court for the Central District of California
U.S. District Court for the Northern District of California
U.S. District Court for the Southern District of California
U.S. District Court for the Eastern District of Texas

Related Employment

Lyon & Lyon LLP, Los Angeles, CA, Associate, 2000-2002

Professional Recognition

Ranked in the Intellectual Asset Management Patent 1000 – The World’s Leading Patent Practitioners, 2012 - 2015
Named a Southern California "Rising Star" by Super Lawyers, 2013

Impact

Professional Leadership

Southern California Biotech Counsel
American Institute of Chemical Engineers

Professional Experience

Patent Litigation

Fontem v. NJOY, Inc.

Represent plaintiff Fontem in enforcing electronic cigarette patents in nine patent cases against some of the largest e-cigarette companies operating in the United States. No. CV14-14-1645. (C.D. Cal.).

Sunworld Industrial Company, Ltd. v. Dye Precision, Inc.

Secured judgment and damages award on behalf of Sunworld that certain Dye Precision paintball guns infringe Sunworld’s patents related to internal pressure regulator technology. No. 14-CV-07654 (C.D. Cal.).

Quintal Research Group, Inc. v. Nintendo of America Inc.

Secured summary judgment victory on behalf of Nintendo related to handheld gaming systems patent owned by Quintal Research Group, Inc. No. 13-CV-00888 (N.D. Cal.).

ThinkOptics, Inc. v. Nintendo of America Inc.

Secured favorable settlement on behalf of Nintendo in a case alleging that the Wii gaming systems infringe patents relating to infrared sensor-based motion tracking technology owned by ThinkOptics, Inc. No. 11-CV-00455 (E.D. Texas).

Salsnes Filter As v. M2 Renewables, Inc.

Secured favorable settlement on behalf of Salsnes Filter in a case relating to wastewater treatment technology owned by Salsnes Filter. No. 11-CV-01239 (C.D. Cal.).

Triton Tech of Texas, LLC v. Nintendo of America Inc.

Persuaded the Federal Circuit to affirm summary judgment that Triton’s patent claims on a computer input device were invalid for indefiniteness because the patent’s specification did not disclose an algorithm corresponding to the claimed “integrator means.” 753 F.3d 1375 (Fed. Cir. 2014).

Shared Memory Graphics, LLC. v. Apple, Inc.

Secured dismissal on behalf of Nintendo in a case alleging Nintendo’s Wii gaming systems infringe patents relating to shared memory technology owned by Shared Memory Graphics LLC. No. 10-CV-02475 (N.D. Cal.).

In re Certain Ground Fault Circuit Interrupters

Represented respondent in Section 337 action for patent infringement regarding ground fault circuit interrupters. Investigation No. 337-TA-615.

Invitrogen Corporation v. President and Fellows of Harvard College

Section 146 appeal of patent interference proceeding. No. 07-CV-0878 (S.D. Cal.).

Vargas v. Blatter

Successfully represented medical device company in patent interference involving a surgical instrument for performing an anastomosis during bypass surgery. No. 105,426 (B.P.A.I. 2006).

Venetec International Inc. v. Medical Device Group Inc.

Successfully defended medical device start-up company against multiple patent infringement claims involving catheter securement devices. No. 06-CV-0083 (S.D. Cal.).

Trustees of Dartmouth College v. Immunex Corporation

Section 146 appeal of interference proceeding. No. 03-CV-2676P (W.D. Wash.).

Fontem Ventures B.V., et al. v. R. J. Reynolds Vapor Company

U.S. District Court for the Middle District of North Carolina
Representing plaintiff Fontem in enforcing fifteen electronic cigarette patents in four infringement cases. Cases are settled. Case Nos. 16-cv-1255-CCE, 16-cv-1257-CCE, 16-cv-1258-CCE, 17-cv-175-CCE.

Fontem Ventures B.V., et al. v. Nu Mark, LLC

U.S. District Court for the Middle District of North Carolina
Represented plaintiff Fontem in enforcing sixteen electronic cigarette patents in two consolidated infringement cases. Cases settled. Case Nos. 16-cv-1259-CCE, 16-cv-1261-CCE.

Fontem Holdings 1 B.V. & Fontem Ventures B.V. v. Njoy, Inc. et al.

U.S. District Court for the Central District of California
Represented plaintiff Fontem in enforcing nine electronic cigarette patents in twenty-four consolidated patent cases against eight of the largest e-cigarette companies operating in the United States. Cases settled. Case No. CV14-1645-GW (lead case).

Contested Patent Matters

R. J. Reynolds v. Fontem Ventures B.V., et al.

Patent Trial and Appeal Board
Represented patent owner Fontem in defending twenty-six inter partes review petitions of electronic cigarette patents. Obtained multiple favorable Board decisions prior to settlement.

Nu Mark, LLC v. Fontem Ventures B.V., et al.

Patent Trial and Appeal Board
Represented patent owner Fontem in defending twenty-five inter partes review petitions of electronic cigarette patents. Obtained multiple favorable Board decisions prior to settlement.

Intellectual Property

Patent Procurement, Counseling and Due Diligence for Cargill Inc.

Patent preparation, prosecution and counseling for the Cargill.

Patent Procurement, Counseling and Due Diligence for Biosphere Industries, LLC

Patent preparation, prosecution, counseling and due diligence related to earth-friendly disposable rigid packaging for the food and nonfood consumer markets.

Patent Procurement, Counseling and Due Diligence for City of Hope

Patent preparation, prosecution, and counseling related to small molecule therapeutics, vaccines, scientific techniques, diagnostic methods, and medical devices.