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Joseph Paquin
OVERVIEW

Joseph H. Paquin, Jr.

Partner

Chicago

One N. Wacker Drive
Suite 4400
Chicago, IL 60606-2833

P 312-338-5934

F 312-759-5646

Intellectual property law litigator and strategist Joe Paquin represents business clients in litigation, patent portfolio development, risk avoidance and exploitation on a national and global scale. At the core of Joe’s practice is the drive to help clients succeed by dedicating himself to providing counsel that directly impacts their bottom line.

OVERVIEW

Intellectual property law litigator and strategist Joe Paquin represents business clients in litigation, patent portfolio development, risk avoidance and exploitation on a national and global scale. At the core of Joe’s practice is the drive to help clients succeed by dedicating himself to providing counsel that directly impacts their bottom line.

Joe focuses his practice on patent litigation, counseling and patent protection, with an emphasis on representing Asian companies. He also represents clients before the U.S. Patent and Trademark Office in post-grant proceedings, including inter partes reviews and patent reexaminations.

A skilled patent strategist with decades of experience, Joe is frequently called upon to act as outside general patent counsel to businesses of all sizes and stages of development. Joe has helped clients harvest and protect inventions, leverage patent portfolios, protect market share and monetize IP assets.

He routinely performs patent infringement and validity analyses and counsels clients on avoiding patent infringement. Joe also advises on patent licensing and has developed and implemented corporate IP programs.

Joe’s industry experience covers a wide spectrum of technologies and consumer goods, including electronics, telecommunication systems, semiconductor memories, computer displays, plastic packaging, institutional furniture products, dental products, injection-molding equipment, power tools, magnetic resonance imaging scanners and lithium ion batteries, among others.

Professional and Community Involvement

Member, Intellectual Property Law Association of Chicago

Member, American Bar Association

Member, American Intellectual Property Law Association

Volunteer, Working In The Schools

Coach, St. Joan of Arc Science Olympiad Team

Honors

Leading Lawyers Network Leading Lawyer, 2016

EXPERIENCE
  • Currently defending a Japanese tool manufacturer in an International Trade Commission investigation involving nail guns
  • Defended a major Hong Kong textile manufacturer from claims of patent infringement and obtained an award of attorneys’ fees and costs totaling nearly $6.8 million*
  • Defended a leading Japanese medical device manufacturer in a multi-district litigation patent case involving MRI technology, where the case settled favorably for the client after filing summary judgment motions*
  • Defended a Japanese tool manufacturer in a seven-patent litigation involving lithium-ion battery powered hand tools, where the case settled after the final rejection of asserted patents during inter partes reexamination*
  • Represented a major semiconductor company in patent infringement litigation involving flash memory, where the case was resolved with a nine-figure settlement in favor of client*
  • Defended a major Japanese corporation in various patent infringement cases involving liquid crystal displays, semiconductor memories and disk storage systems, where the cases settled favorably for client
  • Enforced injection-molding patents on behalf of a large plastic packaging manufacturer, where the cases settled after multiple mediations*
  • Enforced computer display patents against multiple defendants on behalf of a large Japanese electronics manufacturer, where the cases settled on favorable terms for client*
  • Conceived and implemented an intellectual property development and exploitation program for a leading plastic packaging manufacturer*

*This experience occurred prior to joining Barnes & Thornburg.

EXPERIENCE
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