Joshua R.Nightingale (Josh)

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Some of the world's leading domestic and international technology companies entrust Josh Nightingale with their high-stakes litigations at the U.S. Patent and Trademark Office's (USPTO) Patent Trial and Appeal Board (PTAB). A trailblazer at the PTAB, Josh litigated some of the first cases filed in this forum and has made more than 95 appearances there. Leveraging his background in computer and electrical engineering, Josh has handled cases involving a variety of technologies, including software, semiconductors, LED lighting, and electrical circuits.

Josh is also an in-demand thought leader on the subject of PTAB litigation, and he speaks and writes on cutting-edge issues impacting the sector. Josh was recently featured in IP Litigator magazine with his article "USPTO Releases Study on Fintiv Denials," and he is a frequent contributor to Jones Day's PTAB Litigation Blog (PTABLitigationBlog.com). In 2022, Josh was recognized by ALM's The Legal Intelligencer as a "Lawyer on the Fast Track" for his PTAB-related work and writing.

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

In addition to his professional activities, Josh is dedicated to public service. He is involved in the United Way of Southwestern Pennsylvania and is on the board of BEST Robotics, a nonprofit organization that holds robotics competitions for middle and high-school students around the United States. Josh is a former president of the Pittsburgh Intellectual Property Law Association (PIPLA) and a barrister in The Q. Todd Dickinson American Inn of Court.

Experience

  • NXP whittles down competitor's infringement suit involving RFID technology from 26 to four patentsJones Day is defending NXP USA, Inc. in a lawsuit brought by its competitor Impinj, Inc. alleging infringement of 26 patents relating to different aspects of radio frequency identification (RFID) technology.
  • NXP defends multi-jurisdiction patent infringement suits involving RFID technologyJones Day represents NXP U.S.A. Inc. against a competitor in a global patent dispute involving more than 50 patents.
  • NXP litigates against competitor in 18-patent suit directed to RFID technologyJones Day is representing NXP USA Inc. in a patent infringement lawsuit against its competitor Impinj, Inc. in the Western District of Texas.
  • NXP challenges competitor's 14 RFID patents at PTABJones Day represented petitioner NXP USA, Inc. in several inter partes review (IPR) and post grant review (PGR) proceedings at the United States Patent Office's Patent Trial and Appeal Board (PTAB).
  • R.J. Reynolds successfully enforces patents in ITC trial against Philip Morris in dispute over cigarette alternativeJones Day's client Reynolds achieved a precedent-setting victory before the International Trade Commission (ITC) against its main competitors Philip Morris Products S.A. ("Philip Morris") and Altria Client Services LLC ("Altria") in a patent infringement dispute involving tobacco heating and vaping products.
  • Ricoh granted summary judgment of non-infringement in patent case relating to office and production printer technologyOn behalf of Ricoh USA, Inc., Jones Day obtained an order granting a motion for summary judgment of non-infringement on the five remaining patents in a case originally involving 19 patents relating to both hardware and software aspects of office and production printer technology.
  • Qualcomm obtains remand from Federal Circuit based on PTAB's denial of due processJones Day successfully convinced the Federal Circuit to remand the Patent Trial and Appeal Board's ("PTAB's") January 2020 Final Written Decision finding challenged claims of Qualcomm Incorporated's U.S. Pat. No. 9,608,675 ("Power tracker for multiple transmit signals sent simultaneously") unpatentable in six inter partes review ("IPR") proceedings filed by Intel Corporation.
  • 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.
  • 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.
  • 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.
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    April 2024 Blog

    Director Review: PTAB Must Articulate Bases for Section 325(d) Denial, PTAB Litigation Blog

    January 2024 Blog

    “Eleventh Hour” Sotera Stipulation Sufficient to Avoid Denial, PTAB Litigation Blog

    January 2024 Blog

    Petitioner Prevails In Institution Decision Do-Over After Director Steps In, PTAB Litigation Blog

    March 2023 Blog

    PTAB Denies Authorization to Submit Exhibit For Not Following the Rules, PTAB Litigation Blog

    August 2022 Blog

    Motion for Additional Discovery Based on Unraised Arguments Denied, PTAB Litigation Blog

    August 2022 Blog

    USPTO Releases Study On Fintiv Denials, PTAB Litigation Blog

    March 2022 Blog

    PGR Estoppel Continues to be Broad and Onerous, PTAB Litigation Blog

    January 2022 Blog

    Discovery Request Seeking Deposition Preparation Materials Denied, PTAB Litigation Blog

    December 2021 Blog

    Hirschfeld Issues Second Post-Arthrex Grant of Director Review, PTAB Litigation Blog

    November 2021 Blog

    Deposition Exhibits Allowed With Sur-Replies (Sometimes), 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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