Patent litigation attorney

Joseph Melnik

6 tracked appearances — 3 plaintiff · 3 defendant.

Specialty & background

I'll research this attorney before drafting.

Multiple people share this name — let me disambiguate carefully.

Practice focus. W. Joseph ("Joe") Melnik is a registered patent attorney (USPTO Reg. No. 48,741) whose practice sits at the intersection of patent litigation, licensing/technology transactions, and post-grant proceedings. His litigation tech areas skew electronic and financial-services: cryptography, smart cards, biometrics, contactless/secure payment transactions, certificate management, packet filtering and intrusion detection, cellular telephony/SMS, computer networking, wireless communications, semiconductors, and database technologies — plus some mechanical/consumer-goods work (e.g., encrypted RF transmitters, electronic cataloging). Public bios also describe a substantial technology-licensing and patent-portfolio counseling component.

Side preference. The tracked tally is even (3 plaintiff, 3 defendant), but the substance is defense/response side. Melnik acted for operating companies — banks — accused of infringement by Intellectual Ventures II, and the matters captioned with a bank as plaintiff (Compass Bank v. Intellectual Ventures II LLC; Commerce Bancshares v. Intellectual Ventures II LLC) are IPR and declaratory challenges to IV's patents, not NPE-side assertion. There is no indication of plaintiff-side NPE/PAE enforcement practice.

Firm context and notable matters. He is listed at Jones Day's Palo Alto office; his earlier career includes Pepper Hamilton (Pittsburgh, where a 2004 PCT filing lists him as agent) and Mayer, Brown, Rowe & Maw (Chicago). The most prominent tracked matters arise from IV's 2013–2014 campaign against banks: Intellectual Ventures II LLC v. First National Bank of Omaha et al. (lead counsel), Compass Bank v. Intellectual Ventures II LLC (lead and back-up roles), Commerce Bancshares v. Intellectual Ventures II LLC, and the IBM v. IV II proceeding (PTAB counsel). Jones Day's own experience write-up credits the team with prevailing for Compass Bank in three IPRs (IPR2014-00724, -00786; and Commerce Bancshares IPR2014-00801) covering security certificate management, packet filtering and intrusion detection, in which the PTAB held all asserted claims unpatentable; IV declined to appeal one decision and the Federal Circuit affirmed the two it did appeal (Intellectual Ventures II LLC v. Compass Bank, No. 16-1416; Intellectual Ventures II LLC v. Commerce Bancshares, Inc., No. 16-1519, per curiam, Dec. 9, 2016).

PTAB / IPR experience. Yes — he appears regularly in post-grant practice and was designated lead counsel for petitioners in multiple 2014-vintage IPRs (including IPR2014-00617, -00719, -00722, -00724 and -00786), so IPR work is a core rather than occasional part of his docket.

Bar / education. J.D., Case Western Reserve University School of Law, 1994; B.S., The Ohio State University, 1991; admitted in Ohio (1994), Pennsylvania (2003) and California (2008); registered before the USPTO.

Disambiguation note: a California bar record for a "Joseph Melnik" (#255601, Case Western Reserve, admitted 2008) lists a Synopsys, Inc. address, and directory sources disagree on the California admission year (2007 vs. 2008). Public sources do not make clear whether that reflects a later in-house move by this attorney or a same-named lawyer, so current employment should be verified before reliance.

Firms

Roles

  • lead counsel2
  • PTAB counsel1
  • back-up counsel1
  • pro hac vice1
  • counsel1

Cases (6)