Joshua R.Nightingale (Josh)

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Pittsburgh + 1.412.394.7950

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Josh Nightingale represents leading domestic and international technology companies in high-stakes patent litigation. His litigation matters before U.S. district courts, the USPTO's Patent Trial and Appeal Board (PTAB), and the Federal Circuit have involved a variety of technologies across numerous industries, including semiconductors, electrical circuits, computer software, LED lighting, vacuum hoses, and telecommunications.

Josh is actively involved with the PTAB Litigation group at Jones Day and has represented clients in more than 20 post-grant trials at PTAB. He represents clients as both petitioners and patent owners in inter partes review (IPR) and other contested proceedings before PTAB. In a recent case for a patent owner, Josh coauthored preliminary responses that led to PTAB denying institution of IPR for multiple patents. Another recent case for a petitioner involved an IPR challenge of a patent directed to the transmission of data with error detection and correction. Josh further works as an advocate for clients in appeals from PTAB proceedings at the Federal Circuit.

Josh also has an active patent prosecution and counseling practice, preparing and prosecuting U.S. patent applications on behalf of domestic and foreign clients. Representative prosecution clients include Carnegie Mellon University, Educational Testing Service, Marvell Semiconductor, Taiwan Semiconductor Manufacturing Company, and Visa International.

Josh currently serves on the board of managers of the Pittsburgh Intellectual Property Law Association (PIPLA), and he is an active member of The Q. Todd Dickinson American Inn of Court.

Experience

  • Wonderland Nurserygoods secures Federal Circuit affirmance on crib patents without oral argumentJones Day secured a second Federal Circuit win for Wonderland Nurserygoods Co. Ltd in a long-running dispute involving a baby crib patent that underwent multiple rounds of IPRs.
  • Qualcomm successfully defends patentability challenges in five IPR casesJones Day successfully defended challenges to Qualcomm Incorporated's U.S. Pat. No. 9,154,356 ("Low noise amplifiers for carrier aggregation") in five inter partes review ("IPR") proceedings filed by Intel Corporation.
  • R.J. Reynolds and Philip Morris engage in patent battle related to tobacco heating products and vaping productsJones Day is representing R.J. Reynolds Tobacco Company ("Reynolds") and R.J. Reynolds Vapor Company ("RJRV") in several U.S. actions as part of its global patent dispute related to tobacco heating and vaping products. Reynolds filed patent infringement complaints against Philip Morris and Altria entities in the U.S. International Trade Commission and in the U.S. District Court in the Eastern District of Virginia, alleging that Philip Morris' IQOS tobacco heating product infringes a number of Reynolds' patents.
  • Qualcomm successfully defends patent claims against IPR challengeJones Day represented Qualcomm Incorporated in successfully defending patent claims against inter partes review ("IPR") petitions filed by Intel Corporation against U.S. Patent No. 8,838,949, which relates to multi-processor computer systems.
  • NXP files 14 IPR petitions challenging claims of 12 Impinj RFID patentsJones Day is representing NXP Semiconductors N.V. in 14 petitions for inter partes review ("IPR") at the United States Patent Office's Patent Trial and Appeal Board.
  • SAS and IBM challenge patentability of third party patent claims in USPTO reexamination proceedingsJones Day represented SAS Institute, Inc. and International Business Machines Corporation ("IBM") in two patent reexamination proceedings before the USPTO Patent Trial & Appeal Board challenging a software-related patent that had been asserted in a lawsuit filed by InvestPic, LLC.
  • SharkNinja defends against FTI's claims relating to vacuum cleaner technologyJones Day defended SharkNinja Operating LLC against Flexible Technologies, Inc.'s claims of patent infringement, misappropriation of trade secrets, and breach of a confidentiality agreement relating to the development of an electrified stretch e-hose for SharkNinja vacuum cleaners.
  • Cooper Lighting successfully asserts patents relating to LED downlights against competitorsJones Day represented Eaton Corporation's subsidiary Cooper Lighting, LLC, in successfully asserting four Cooper Lighting patents on LED downlights against competitors Cordelia Lighting, Inc. and Jimway, Inc.
  • Wonderland Nurserygoods defends patents claims in remanded IPRsJones Day is defending Wonderland Nurserygoods Co. Ltd. before the PTAB in a SAS remand for consideration of previously non-instituted grounds of unpatentability of challenged claims.
  • McCain successfully defends patented French fry processing technology against IPR petition brought by competitor J.R. SimplotJones Day successfully represented McCain Foods Limited in defending an inter partes review (IPR) petition filed by competitor J.R. Simplot Company against U.S. Patent No. 6,821,540, which relates to French fry processing technology.
  • Wonderland Nurserygoods restores patent claims with Federal Circuit reversalWonderland Nurserygoods Co. Ltd., represented by a cross-office, cross-practice team of Jones Day lawyers, obtained a reversal of a decision from the Patent Trial and Appeal Board (PTAB) which restored Wonderland's challenged claims from its U.S. Reissue Patent No. RE43,919, for an easy-to-assemble baby crib.
  • McCain battles Simplot in IP litigation over utility patents, design patents, and trade dress for frozen potato productsIn this competitor case, Jones Day is enforcing McCain Foods Limited's patent rights relating to McCain's French fry processing technology and potato product designs against Simplot, one of McCain's chief rivals.
  • Eaton successfully defends indoor lighting patents against IPR petitionsJones Day represented Eaton Corporation's subsidiary Cooper Lighting, LLC, in successfully defending two inter partes review petitions filed by Cordelia Lighting, Inc., against U.S. Patent Nos. 8,348,479 and 8,789,978, which relate to indoor lighting.
  • Avid settles revived data storage patent infringement suit against Harmonic shortly before trialAfter a Jones Day team obtained a reversal of an adverse jury verdict from the United States Court of Appeals for the Federal Circuit on behalf of Avid Technology, Inc. ("Avid"), the case settled shortly before trial.
  • Xilinx proves unpatentability of third party patent claims in USPTO IPR and at Federal CircuitJones Day successfully represented Xilinx, Inc. in defending patent claims asserted by PLL Technologies, Inc. in the District of Delaware as well as before the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) challenge to the patent and on the subsequent appeal to the Federal Circuit.
  • Synopsys obtains reversal of PTAB unpatentability decisionJones Day obtained a rare reversal of the PTAB on behalf of Synopsys, Inc. in its ongoing battle with ATopTech, Inc.
  • Riverside acquires Competitive Edge SoftwareJones Day represented The Riverside Company in connection with the acquisition and related financing of Competitive Edge Software, a developer of cloud-based security and law enforcement reporting and management solutions to customers in a variety of industries including education, healthcare, corporate, private security, and law enforcement.
  • SAP establishes diverse patent portfolio directed to software and database innovationsJones Day represents a leading enterprise software and database developer SAP SE in managing patent portfolios directed to diverse innovations including database technologies, mobility, UX, cloud computing, and big data.
  • Zynga petitions for IPR before PTABJones Day represents Zynga Inc. in four IPRs before the PTAB.
  • ANSYS expands global intellectual property portfolioJones Day provides IP advice to ANSYS, Inc. and assists with the prosecution and management of its international patent portfolio related to engineering simulation for assisting the world's most innovative companies in delivering radically better products to their customers.
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    April 2020 Blogs

    Precedential: Two-Part Framework for Applying § 325(d), PTAB Litigation Blog

    November 6, 2019 Firm Hosted

    Jones Day’s 2019 Speaker Series: IP Roundup 2019

    July 2019 Blogs

    Mere Similarity Between References is Insufficient Rationale for Obviousness, PTAB Litigation Blog

    May 2019 Jones Day Publications

    Mid-Year Review of Key Trade Secret Decisions

    October 2018 Blogs

    USPTO’s Revised SOP Sheds Light on Selection of PTAB Panels, PTAB Litigation Blog

    May 2018 Blogs

    USPTO Holds Webinar to Discuss Supreme Court’s SAS Decision, PTAB Litigation Blog

    March 2018 Blogs

    PTAB Permits "Do-Over" of Motion-to-Amend Briefing Following Aqua Products, PTAB Litigation Blog

    January 2018 Blogs

    IPR Proceedings: Extrinsic or Intrinsic Evidence for Claim Construction?, PTAB Litigation Blog

    October 2017 Alerts

    Burden of Proving Unpatentability of Amended Claims Placed on IPR Petitioners

    June 2017 Blogs

    Federal Circuit Denies Motion to Stay Pending Supreme Court Decision in Oil States, PTAB Litigation Blog
    View All

    Speaking Engagements

    • April 26, 2018
      Jones Day's 2018 Speaker Series: IP Roundup - Strategic Enforcement Considerations
    • November 16, 2016
      IP Roundup
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