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Joseph A. Calvaruso

Senior Counsel

New York

Joseph A. Calvaruso is a partner in the Intellectual Property group in the New York office. Joe, a veteran intellectual property lawyer focusing on patent litigation, has extensive experience at the trial and appellate levels.

Joe also has litigated cases involving trademarks, trade secrets, false advertising, antitrust and unfair competition. In addition, Joe has extensive experience as lead counsel in Inter Partes Reviews before the Patent Trial and Appeal Board of the U.S. Patent & Trademark Office.

Known for his candid approach and formidable courtroom style, Joe has the trust of his clients and the respect of the bench. As a veteran patent litigator, he can distill complicated facts into precise strategies that often resolve matters by summary judgement, saving his clients valuable time and expense.

As one client put it, "Joe Calvaruso is exceptional, his work has been truly excellent." (Legal 500) Another client offered: "He's like a defenseman on a hockey team or an NFL linebacker - tough as nails. But he's always fair and a good person on your side to or go up against. He just gets the technology as well." (IAM 1000) Intellectual Asset Management ("IAM") rates Joe as a "practical commercial lawyer, he has talent for resolving disputes early, together with the courtroom skills to prevail at trial...."

Joe’s diverse experience includes consumer electronics, computer hardware and software, optical equipment, medical devices, semiconductor devices and fabrication, and financial services.
His demonstrated ability to translate complicated topics to judges and juries is a valuable asset particularly appreciated by his international clients. Joe uses the same clear and practical approach to help non-English speakers understand intricate legal issues.

  • Joe is a former chair of AIPLA's IP Practice in Japan Committee and an active member of AIPLA's IP Practice in Europe Committee. As a regular member of small delegations from those Committees, Joe travels to Japan and Europe and presents on topics concerning U.S. IP law to various IP organizations. Joe regularly presents to the Japan Intellectual Property Association, Japan Patent Attorneys Association, LES Japan, AIPPI Japan, Japan Federal Bar Association, Japanese Trademark Association, The Judges of the IP High Court in Tokyo, Chartered Institute of Patent Attorneys in the U.K., CNCPI in France and Patentanwaltskammer (German Chamber of Patent Attorneys) in Germany.

    • Canon Inc. v. Tesseron (S.D. NY) Patent. Secured a victory for Canon Inc. (CINC) and Canon U.S.A., Inc. (CUSA) on multiple claims arising out of a patent license agreement, under which CINC obtained a license to use certain patents related to printing technology. Specifically, we successfully defended Canon against an attempted termination of the license agreement by the licensor of the patents by obtaining summary judgment that the termination was improper because it was based on an unenforceable “no challenge “ clause in the agreement. We also obtained summary judgment that CINC had validly given a retroactive license to its subsidiary CUSA, such that all of CUSA’s sales of accused products are immunized by patent exhaustion.
    • Digitech Image Technologies v. Electronics for Imaging (C.D. Cal.) Patent. Secured summary judgment for Canon, Inc. in a patent infringement action filed by Digitech, a subsidiary of one of the nation's largest patent trolls Acacia Research Corporation. Digitech accused 45 digital camera companies and electronics retailers of infringing a digital image processing system. In granting our summary judgment motion, the court ruled that the asserted claims were invalid because they do not address patentable subject matter.
    • Multimedia Patent Trust v. Canon Inc. and Canon USA, Inc. (S.D. Cal.) Patent. Lead counsel in successfully defending Canon in a patent infringement action involving four patents directed to video compression. Obtained summary judgment of noninfringement in Canon's favor.
    • Panavision Imaging, LLC v. Canon USA Inc. (C.D. Cal.) Patent. Lead counsel in successfully defending Canon in a patent infringement involving patents directed to image sensors used in digital SLR cameras and camcorders. Obtained summary judgment of noninfringement and final judgment in Canon's favor.
    • GTX v. Canon USA Inc. (E.D. Tex.) Patent. Lead counsel in successfully defending Canon in a patent infringement action involving a patent directed to software used in scanners. Obtained Summary Judgment of noninfringement and final judgment in Canon's favor.
    • Hakim v. Cannon Avent GRP PLC, et al. (W.D. La.) Patent. Lead counsel for Cannon Avent Group in action involving two patents directed to non-spill cups. Won dismissal based on summary judgment of noninfringement and invalidity. Federal Circuit affirmed in all respects. U.S. Supreme Court denied cert.
    • Duracraft Corp. v. Honeywell, Inc. (D. Mass.) Patent, trade dress, false advertising. Lead counsel for Duracraft in action involving patent directed to HEPA cleaner; won summary judgment motion on trade dress count; case ultimately settled.
    • Trustees of Columbia, et al. v. Columbia/HCA Healthcare Corporation (S.D.N.Y.) Trademark. Lead counsel for Columbia/HCA; defeated motion for temporary restraining order (TRO) and, after full trial, court found for Columbia/HCA based on no infringement and plaintiff's laches and estoppel.
    • Citibank, N.A. and Citicorp v. Citytrust (E.D.N.Y.) Trademark. Lead counsel for Citibank and Citicorp; case settled favorably for the client after a 13-day trial.
    • Citibank, N.A. and Citicorp v. City Bank, et al, City Bank-Rankin and City Financial Bancorp., Inc. (N.D. III.) Trademark and contract. Lead counsel for Citibank and Citicorp. After a mini-trial, the court enforced oral settlement agreement and awarded Citibank attorney's fees.
    • Better Methods, Inc. v. Perforated Pattern Co., Inc. (S.D.N.Y.) False advertising. Counsel for Better Methods; obtained preliminary and final injunction.
    • Valeo Electrical Sys, Inc. v. Siemens Auto Corp. (E.D. Mich.) Patent. Lead counsel for Valeo Electrical Systems in action involving patents directed to automotive fan assemblies; case settled with payment to Valeo.
    • Harthcock v. MIPS Technologies, Inc. et al. (E.D. Tex.) Patent. Lead counsel for Yokogawa Corporation of America in infringement action involving microprocessors. Case dismissed with no payment or concessions by Yokogawa.
    • Laboratory Corporation Holdings v. Metabolite Laboratories, Inc. et al. U.S. Supreme Court (2006). Counsel for amicus curiae American Express Company.
    • Int's Nutrition Co. v. Arkopharma, Inc. et al. (D. Conn.) Patent. Lead counsel for Arkopharma in action involving patent directed to dietary supplement; successful motion to dismiss for lack of standing; upheld by Court of Appeals for the Federal Circuit.
    • In re certain Daisy Wheel Printers (U.S. ITC) Patent. Counsel for Juki Corporation in ITC action involving patent directed to daisy wheel printers.
    • Procter & Gamble Co. v. Nabisco Brands, Inc., et al. (D. Del.) Patent. Counsel for P&G in a patent and trade secret case involving sugar chemistry. Settled on eve of trial for payment to P&G of $125 million, which was the largest settlement in a patent case at the time.
    • Industrial Acoustics Company, Inc. v. Austin Acoustics, Inc. (S.D.N.Y.) Patent. Lead counsel for IAC in action involving patent directed to anechoic chambers and components; case settled with payment to IAC.
    • Boehringer Ingelheim GmbH, et al. v. Pharmadyne Laboratories, et al. (D. N.J.) Patent and trade dress. Counsel for Boehringer in patent and trade dress case involving pharmaceutical products; judgment for Boehringer after trial.