Joseph M.Sauer (Joe)

Partner

Cleveland + 1.216.586.7506

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With more than 20 years of experience, Joe Sauer is actively involved in the PTAB Litigation group at Jones Day and has represented clients in more than 60 post-grant trials at the Patent Trial and Appeal Board. Joe provides clients with a broad range of patent services, including the development and management of international patent portfolios, freedom-to-practice opinions, ex parte and inter partes patent reexamination and post-grant reviews, prelitigation and general IP counseling, and patent litigation. In addition to his patent practice, he has experience in trademark, copyright, and trade secret litigation.

Joe has represented clients in a wide range of industries, including Avid Technology, Blackberry, Bridgestone, Carnegie Mellon University, ClearCount Medical Solutions, Eastman Kodak, Gennum, Goliath Solutions, Google, IBM, Marvell Semiconductor, MIM Software, Qualcomm, Quiksilver, Sandisk, SAS Institute, Semtech, SharkNinja, Synopsys, Xilinx, Visa International, and many others.

Before attending law school, Joe worked as a test engineer at Compunetix, Inc. in Monroeville, Pennsylvania, where he was responsible for the analysis and testing of digital and analog systems, including multimedia multipoint telecommunication systems. He is also active in civic and community affairs, serving on several local nonprofit boards.

Experience

  • The Marena Group obtains dismissal of patent infringement allegations over its compression fabric garmentsJones Day defended The Marena Group, LLC, a manufacturer of medical-grade compression garments, against patent infringement allegations brought by EFA, Inc. in the Northern District of Georgia.
  • Automotive supplier successfully invalidates 13 claims in competitor's patent relating to exterior automotive mirrors in IPR proceedingOn behalf of an automotive supplier Motherson Innovations Company, Jones Day successfully invalidated 13 claims in a competitor's patent related to exterior automotive mirrors.
  • 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.
  • 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.
  • 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.
  • 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.
  • Timken acquires Cone DriveJones Day advised The Timken Company in its acquisition of Cone Drive, a leader in precision drives used in diverse markets including solar, automation, aerial platforms, and food and beverage.
  • Synopsys reaches agreement with Mentor Graphics in competitor patent caseJones Day served as lead trial counsel for Synopsys Inc. in competitor patent litigation against Mentor Graphics Corporation following the Federal Circuit’s remand of the case to the district court.
  • 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.
  • 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.
  • Xilinx obtains Federal Circuit decisions affirming dismissal under Alice and setting personal jurisdiction precedentJones Day represented Xilinx, Inc. in multiple venues against patent infringement assertions relating to integrated circuit testing technology.
  • 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.
  • Avid successfully defends PTAB patentability ruling before Federal CircuitJones Day, on behalf of Avid Technology, Inc. ("Avid"), successfully obtained a unanimous panel decision of the United States Court of Appeals for the Federal Circuit on March 1, 2016, affirming the PTAB's final written decision confirming the patentability of claims of Avid's U.S. Patent No. 5,495,291, directed to video decompression technologies.
  • Cree files IPR petition challenging U.S. Patent Nos. 6,373,188 and RE41,685Jones Day represented Cree, Inc. in filing an IPR petition challenging U.S. Patent Nos. 6,373,188 entitled "Efficient Solid-State Light Emitting Device with Excited Phosphors for Producing a Visible Light Output" and RE41,685 entitled "Light Source with Non-White and Phosphor-based White LED Devices, and LCD Assembly."
  • 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.
  • Zynga wins jury verdict of non-infringement in Personalized Media Communications suitJones Day represented Zynga Inc. in its successful defense of patent infringement allegations brought in Marshall, Texas by non-practicing entity Personalized Media Communications LLC ("PMC").
  • Minted raises capital in Series C Preferred financingJones Day advised Minted, Inc., an online marketplace for independent design and art, in connection with its issuance of $41 million of Series C Preferred Stock in a private placement to Technology Crossover Ventures, Allen & Company, and Benchmark Capital.
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    April 2022 Blog

    PTAB Allows Supplemental Information Request To Fly, PTAB Litigation Blog

    November 2021 Blog

    PTAB Denies IPR Institutions Without Patent Owner Rebuttal Evidence, PTAB Litigation Blog

    November 2019 Blog

    Government to Request Arthrex Rehearing; Rush for Remands Slowed, PTAB Litigation Blog

    April 2019 Blog

    Seeing Multiple: Observations from Petitioner Filing Strategies Following SAS, PTAB Litigation Blog

    January 2019 Commentary

    USPTO Releases New Guidance on Patent Subject Matter Eligibility

    November 2018 Blog

    PTAB Bar Association Hosts Inaugural Thought Leader Summit, PTAB Litigation Blog

    October 2018 Blog

    Observations: Five Months After Supreme Court SAS Institute, PTAB Litigation Blog

    August 2016 Blog

    Injury in Fact Required to Bring Appeal from PTAB Decision, PTAB Litigation Blog

    May 2018 Blog

    Observations: Three Weeks After Supreme Court’s SAS Institute Decision, PTAB Litigation Blog

    February 2018 Blog

    Tribal Sovereign Immunity Doctrine Does Not Insulate Tribes From Board Actions, PTAB Litigation Blog
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