Joseph M. Casino has broad experience in all aspects of intellectual property law, including litigation, licensing, opinions, and prosecution. Resolution of patent matters through negotiation, litigation, and arbitration has been a focal point of his practice. He has extensive experience handling intellectual property rights matters related to the high technology industries, including computer technology, hybrid electric vehicles, battery technology, semiconductors, fiber optics, and consumer electronics such as cellular technology, televisions, and DVDs. He has spent time in Japan working as in-house patent counsel for Matsushita Electric Industrial, Co. Ltd. (“Panasonic”) and continues to work extensively for Panasonic and other Japanese clients.

Mr. Casino has presented many lectures to clients on topics ranging from patent exhaustion, drafting patent license agreements, damages and risk analysis, claim construction, and the doctrine of equivalents.

Mr. Casino has negotiated many complex license agreements, including cross licenses of large patent portfolios. He has been involved in all aspects of licensing programs from patent assertions, developing defensive positions, drafting agreements and analysis of the surrounding legal issues in settling license disputes such as patent exhaustion, misuse, corporate issues and antitrust issues.

Mr. Casino graduated cum laude from Brooklyn College with a degree in computer science. He received his law degree from the Brooklyn Law School where he graduated cum laude. While in law school he was the Executive Notes and Comments Editor of the Brooklyn Journal of International Law and received multiple academic awards.

Mr. Casino is a member of the New York State Bar and is admitted to practice before the United States Patent and Trademark Office.

Published Works

• "U.S. Supreme Court Affirms Bilski, But Sets The Course Clear For Business Methods Patents" June 28, 2010
• "The Impact Of American Needle On IP And Contracts" IP Law360, May 26, 2010
• "Increase of False Patent Marking Litigation", Nikkei BP Chizai Awareness, April 26, 2010 (published in Japanese)
• "Amster, Rothstein & Ebenstein LLP Patent Law Alert: Supreme Court to Decide Whether Foreign Sale Exhausts Copyrights"
  April 23, 2010
• "Update To Recent Patent Damages Article", Patently-O Guest Blog, April 1, 2010
• "Federal Courts Closely Scrutinizing and Slashing Patent Damage Awards", 2010 Patently-O Patent Law Journal 24, March 3, 2010
• "Amster, Rothstein & Ebenstein LLP Patent Law Alert
  Federal District Courts In Texas Have Begun To See The First Of What Could Be A Wave Of Lawsuits Alleging False Patent Marking In Violation Of 35 U.S.C. § 292.", February 25, 2010
• "Amster, Rothstein & Ebenstein LLP Patent Law Alert
  Federal Circuit Confirms That Fines For False Patent Marking Are To Be Imposed For Each Unit Falsely Marked", January 6, 2010
• "Amster, Rothstein & Ebenstein LLP Patent Litigation Alert
  FTC Closes Rambus Investigation", June 12, 2009
• “Transferring Cases Out Of Eastern Dist. Of Texas” IP Law 360, October 15, 2008
• Quanta: The Supreme Court Sets the Law on Patent Exhaustion Back on Track, Common Law Journal, June 29, 2008
• How the Federal Circuit Has Departed From the Traditional Law of Patent Exhaustion, Common Law Journal, June 29, 2008
• The Supreme Court's Decision in Quanta, Common Law Journal, June 29, 2008
• Issues Not Addressed in Quanta, Common Law Journal, June 29, 2008
• “High Court Sets Patent Exhaustion Law Back On Track”
  IP Law360, June 10, 2008
• “Will The High Court Clarify The Exhaustion Doctrine?”
  IP Law360, January 16, 2008
• “In re Seagate Technology: Willfulness and Waiver, a Summary and a Proposal” Patently-O Patent L.J. 1, May 14, 2007

Speaking Engagements

• Intellectual Property Seminar - (i) The Federal Circuit's en banc decision in Ariad v. Lilly: Implications for Patent Litigation and Patent Prosecution; and (ii) Marking: Why to Mark, When to Mark, How to Mark, and the Dangers of False Marking, Kyoto, Japan, May 11, 2010