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 Panasonic Corporation (“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.

ARELaw Alerts

• ARE Patent Law Alert:
  Overview of the Leahy-Smith America Invents Act on Patents
  September 13, 2011
  
  
• ARE Patent Litigation Alert:
  Recent Applications of the Bilski Test for Patentable Subject Matter by The Federal Circuit and District Courts
  August 17, 2011
  
  
• ARE Patent Litigation Alert:
  USPTO Proposes to Revise the Materiality Standard for the Duty to Disclose to Conform with the Therasense
  July 22, 2011
  
  
• ARE Litigation Alert:
  U.S. Supreme Court Confirms “Clear and Convincing” Evidence Standard Applies to Validity Challenges for Patents
  June 9, 2011
  
  

• ARE Patent Law Alert:
  Federal Circuit Holds That False Marking Must Be Pled With Particularity Under Fed. R. Civ. P. Rule 9(b)
  March 16, 2011
  
  
• ARE Patent Litigation Alert:
  Uniloc USA v. Microsoft: Federal Circuit Held the 25% Rule of Thumb By Damages Expert is a Fundamentally Flawed Tool for Determining a Baseline Royalty Rate In Patent Damages Analysis
  January 4, 2011
  
  
• ARE Patent Law Alert:
  Disappointingly: The Supreme Court Does Not Decide Whether Foreign Sale Exhausts Copyrights
  December 14, 2010
  
  
• ARE Patent Law Alert:
  U.S. Supreme Court Affirms Bilski, But Sets The Course Clear For Business Methods Patents
  June 28, 2010
  
  
• ARE Patent Law Alert:
  Supreme Court to Decide Whether Foreign Sale Exhuasts Copyrights
  April 23, 2010
  
  
• ARE 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
  
  
• ARE Patent Law Alert:
  Federal Circuit Confirms That Fines for False Patent Marking are to be Imposed for Each Unit Falsely Marked
  January 6, 2010
  
  
• ARE Patent Litigation Alert:
  FTC Closes Rambus Investigation
  May 14, 2009
  
  

Published Articles

• Implications of Post-Seagate Cases Finding Willful Infringement
  NYIPLA Bulletin, August/September, 2011
  
  
• CAFC rejects the 25% Rule of Thumb as a Fundamentally Flawed Toll in Reasonable Royalty Calculation (Available only in Japanese)
  - Nikkei IP Awareness, January 13, 2011 (published in Japanese)
  
  
• The Impact Of American Needle On IP And Contracts
  - IP Law360, May 26, 2010
  
  
• Increase of False Patent Marking Litigation (available only in Japanese)
  - Nikkei BP Chizai Awareness, April 26, 2010 (published in Japanese)
  
  

• 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 L.J. 24
  
  
• Transferring Cases Out of Eastern Dist. Of Texas
  - IP Law360, October 15, 2008
  
  
• High Court Sets Patent Exhaustion Law Back On Track
  - IP Law360, July 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

• October 11, 2011 – October 13, 2011
  Patent Law Seminar: (i) Licensing - Pitfalls and Strategies for License Negotiations and Agreements; (ii) Willful Infringement after Seagate; (iii) U.S. Patent Litigation For Japanese Companies
  Location: Tokyo, Osaka, and Nagoya, Japan
• May 11, 2010
  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
  Location: Kyoto, Japan