Joseph Cianfrani

Partner

Orange County

949-760-0404

joe.cianfrani@knobbe.com

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Overview

Recognition

Resources

Joe Cianfrani is the chair of the firm’s litigation practice. For the last 20 years he has successfully represented the firm’s clients in high-stakes intellectual property disputes at both the trial and appellate levels. Joe combines a strong technical background with a thorough understanding of his clients’ business goals. He takes enormous pride in not only crafting a winning legal strategy, but one that achieves his clients’ business goals—long before the first brief is drafted.

Joe has tried numerous jury cases on behalf of both plaintiffs and defendants. Joe has served on trial teams in obtaining $134.5 million and $43.5 million jury verdicts for infringement of patents held by the firm’s medical device clients. Joe has also successfully defended the firm’s clients against unwarranted patent infringement claims and obtained complete dismissals in many such cases.

Joe's practice primarily involves representing litigants in federal district court and the Patent Trial and Appeal Board (PTAB), Joe has also maintained an active appellate practice before the United States Court of Appeals for the Federal Circuit where he once served as a law clerk to the Honorable Arthur J. Gajarsa from 1997-98. Since then, Joe has represented the firm’s clients on more than 50 appeals and petitions for inter partes review involving computer peripherals, optics, electronics, software, pharmaceuticals, DNA sequencing, and medical devices.

As an active bar leader, Joe has served on the board of directors of the American Intellectual Property Association and has written numerous amicus briefs for that organization and bar associations on a wide variety of legal issues. He is a frequent lecturer on IP law and litigation strategy, and has taught patent litigation as an adjunct law professor. Joe has been recognized with numerous awards as a “rising star,” "super lawyer," and stand-out lawyer in intellectual property litigation both locally (Super Lawyers) and nationally (The Best Lawyers in America).

Clerk Experience

Law clerk to the Honorable Arthur J. Gajarsa of the United States Court of Appeals for the Federal Circuit, 1997-98

Education

University of Virginia School of Law (J.D., 1997), Editor of the University of Virginia Law Review, John M. Olin scholarship winner

George Mason University (M.S. Electrical and Computer Engineering, 1997)

University of Virginia (B.S. Electrical Engineering, 1991)

University of Virginia School of Law

George Mason University

University of Virginia

State Bar of California

Supreme Court of the United States

U.S. Court of Appeals for the Eleventh Circuit

U.S. Court of Appeals for the Federal Circuit

U.S. Court of Appeals for the Ninth Circuit

Electronics & Semiconductors

Medical Devices & Procedures

Optics

Software & Information Technology

Practice Areas

Copyrights

Consumer Products Litigation

Trademarks & Brand Protection

IP Strategy

Electrical, Semiconductor & Computer Technology Litigation

Appellate Litigation

Medical Device Litigation

Trademark & Brand Protection Litigation

Patents

Patent Office Litigation

Awards & Honors

Joe has received multiple awards and has been honored for his legal accomplishments:

Selected to the 2007-2020 editions of The Best Lawyers in America® for his work in Intellectual Property Litigation, Patent Litigation, Patent Law and Trademark Law
Named in 2019 as one of the "World's Leading Patent Professionals" for Litigation in the Patent 1000 guide by Intellectual Asset Management (IAM) magazine.
Recognized by The Legal 500 for Patent Licensing and Patent Litigation in 2019
Selected for inclusion in the "Southern California Super Lawyers" list and was recognized for his work in intellectual property litigation by Super Lawyers Magazine (2013-2019)
Named the Best Lawyers’ 2014 Orange County Litigation Patent "Lawyer of the Year"
Named as one of Southern California’s “Rising Stars” in intellectual property law published in Los Angeles magazine and Super Lawyers magazine (2006, 2007, 2008 and 2012)
Recognized as one of Orange County’s “Top Attorneys” (2009 - 2011)

Representative Matters

Spectrum Brands, Inc. v. Assa Abloy AB, IPR2015-01562 (Pat. Trial & Appeal Bd.), Appeal No. 2017-1817 (Fed. Cir.): Obtained affirmance of final written decision by the Patent Trial & Appeal Board canceling 16 patent claims relating to electronic locks asserted by a competitor in litigation.

Vaultet LLC v. Starbucks Corp., No. 17-cv-471 (E.D. Tex 2017). Successfully defended Starbucks against patent infringement claims.

Masimo Corp. v. Sotera Wireless, No. 16-05968 (S.D. Cal Bkr. Sept. 9, 2017). Obtained judgement and damages for trade secret theft.

Personalized Media Communications v. Amazon.com, No. 2015-2008, 671 F. App'x 777 (Fed. Cir. 2016). Affirming judgement of invalidity of 7 asserted patents.

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359 (Fed. Circ. 2016). Successfully obtained affirmance of IPR decision confirming the validity of a patent on DNA sequencing owned by Illumina.

Personalized Media Communications v. Amazon.com, No. 13-1608RGA, 2015 WL 4730906 (D. Del. 2015). Successfully obtained judgment of invalidity of 7 asserted patents.

Amazon.com v. Personalized Media Communications, IPR Nos. 2014, -1527,-1528,-1530,-1532,-1533,-1534. Obtained finding of invalidity on all challenged claims of 7 patents; Aff'd Fed. Cir. 2018

Hansen Beverage Co. v. KO Beverages, No. CV103955 (C.D. Cal. 2011). Successfully represented Hansen Beverages in trademark infringement litigation involving “Monster” trademark and tradedress.

Schindler Elevator Corp. v. Otis Elevator Co., 593 F.3d 1275 (Fed. Cir. 2010). Successfully obtained reversal of summary judgment and claim construction on patent relating to elevator scheduling systems.

Cam Guard, Inc. v. Smart Systems Technologies, Inc., (C.D. Cal. 2008). Represented patentee in obtaining summary judgment of infringement and validity and obtained substantial damages award in a jury trial.

Hansen Beverage Co. v. National Beverage Co., et al., (C.D. Cal. 2007). Represented plaintiff Hansen Beverages in trademark and trade dress case involving Monster Energy Drinks.

Applied Medical Resources Corp. v. United States Surgical Corp., 448 F.3d 1324 (Fed. Cir. 2006). Obtained reversal of district court decision granting summary judgment of noninfringement.

Applied Medical Resources Corp. v. United States Surgical Corp., 353 F. Supp.2d 1075 (C.D. Cal. 2004). In jury trial, represented medical device maker in obtaining verdict of $43.5 million and a finding that U.S. Surgical had willfully infringed the asserted patent. The Court upheld the verdict, enhanced the damages, and entered a $64.5 million judgment. Judgment affirmed by the United States Court of Appeals for the Federal Circuit, 454 F.3d 1356 (Fed. Cir. 2006).

Mallinckrodt, Inc. v. Masimo Corp., 254 F. Supp.2d 1140, 292 F. Supp.2d 1201, and 293 F. Supp.2d 1102 (C.D. Cal 2003). In jury trial, obtained $134.5 million verdict for owner of four patents on readthroughmotion pulse oximeters. Jury found that Defendant had willfully infringed the four asserted patents, while also finding that client had not infringed a Tyco patent. The court had previously dismissed on summary judgment other Nellcor patents and defenses in orders cited above. The district court’s judgment was affirmed on appeal by the United States Court of Appeals for the Federal Circuit.

Articles

Coauthor: “How Much Fuel to Add to the Fire of Genius? Some Questions About the Repair/ Reconstruction Distinction in Patent Law” 48 Am. Univ. L. R. 1205 (1999)

“An Economic Analysis of the Doctrine of Equivalents” 1 VJLT 1 (1998)

Authored numerous amicus briefs on behalf of bar organizations, trade associations, and clients to the U.S. Supreme Court and U.S. Courts of Appeal in various intellectual property cases

Speeches & Seminars

Speaker, "Weekly Appellate Report Podcast," Daily Journal (June 2016)

Moderator, Best Practices for Litigating and Managing Disputes under AIA, Patent Disputes 2013 Conference, Costa Mesa, CA (2013)

Spoken extensively on the impact of decisions from the U.S. Supreme Court and the Court of Appeals for the Federal Circuit on damages, claim construction and the doctrine of equivalents in patent law