Josh Pond is a registered patent attorney who focuses his practice on intellectual property counseling, including all aspects of patent litigation and portfolio strategy. He has experience with pre-suit investigations, district court Markman hearings and jury trials, International Trade Commission (ITC) investigations and trials, and expert witness testimony. Mr. Pond also counsels clients on patent portfolio development and acquisition, patent licensing and negotiations, as well as patent prosecution and validity challenges before the U.S. Patent and Trademark Office, particularly inter partes review (IPR).
Prior to joining the firm, Mr. Pond was principal in the Washington, D.C. office of an international law firm where he was a leader of its Post Grant Practice Group, with his practice centered on patent litigation and strategic counseling. Prior to law school, Mr. Pond served as a Field Artillery Captain in the U.S. Marine Corps at Camp Pendleton, California for seven years. He was deployed to the Persian Gulf and awarded the Defense Meritorious Service Medal.
In 2014, Mr. Pond was recognized as a Washington, D.C. "Rising Star" in the area of Intellectual Property by Super Lawyers magazine.
Represented Respondent Samsung against Complainant Ericsson in patent infringement and importation investigation related to smartphones, telecommunications base stations, tablet computers, televisions and media players, particularly as to domestic industry issues. Completed six-day trial before Administrative Law Judge David P. Shaw, resulting in favorable settlement of the world-wide, multi-jurisdictional dispute.
In re Certain Electronic Devices, ITC Investigation No. 337-TA-862 2013
Counselled petitioner ScentAir in 2013 inter partes review challenging validity as to two patents of competitor Prolitec related to liquid diffusion methods and systems. The USPTO's Patent Trial and Appeal Board ruled in favor of client ScentAir in 2014, finding all challenged claims unpatentable. The Federal Circuit affirmed both rulings in 2015.
U.S. Patent and Trademark Office Patent Trial and Appeal Board, Case Numbers IPR2013-00179 and IPR2013-00180.
U.S. Court of Appeals for the Federal Circuit, Appeal Nos. 2015-1017 and 2015-1020. http://www.law360.com/articles/734448/fed-circ-backs-ptab-s-air-freshener-patent-invalidation
Reebok against Respondents RBX Active in patent infringement and importation investigation related to athletic shoe sole functionality. Case favorably settled after Respondents agreed to cease importation. In re Certain Athletic Footwear, U.S. ITC Investigation No. 337-TA-1018.
Represented defendant LG Electronics MobileComm in patent infringement case in E.D. Texas (2005) related to media downloading to mobile devices. Successfully initiated ex parte reexamination of patent-in-suit, resulting in stay of litigation.
Counseled web company with more than 100 million hits per month on numerous patent acquisitions, including in-depth due diligence on claim scope and validity.
Represented Respondent against Complainant HTC in patent infringement and importation investigation related to smartphones and tablets, particularly as to domestic industry and remedy issues. Completed six-day trial before Administrative Law Judge Thomas B. Pender, resulting in favorable settlement of the world-wide, multi-jurisdictional dispute.
In re Certain Electronic Devices, ITC Investigation No. 337-TA-808 2012
Lead counsel for respondents Sennheiser electronics & Co. GmbH and Sennheiser USA in patent investigation involving Bluetooth headphones. Settled favorably before significant discovery or litigation activity.
In re Certain Wireless Headsets, ITC Investigation No. 337-TA-943.
Kilpatrick Townsend prevailed on behalf of Patent Owner S&S Precision, securing denial of post-grant review institution as to certain key S&S Precision patent claims to tactical signaling devices. The Patent Trial & Appeal Board concurred with S&S Precision’s Preliminary Response, finding Core Survival failed to demonstrate obviousness of the non-instituted claims with its Petition; the Board further denied Core Survival’s request for rehearing on the issue. Case Number PGR2015-00022.
Developed intellectual property portfolio and strategy for startup in the business-to-business cloud platform space as lead of client’s IP Strategy Group, supporting explosive growth to a $300-million market valuation, with more than 150 employees in the U.S. and Europe, and recent expansions to China and Japan.
Represented defendant Semiconductor Energy Laboratory (SEL) in unfair competition and injurious falsehood case in D. District of Columbia (2006) related to organic light-emitting diode technology. Judge John D. Bates granted client SEL’s motion to dismiss.
Guided co-founders of sporting goods startup on patent matters, including prosecution, product clearance, licensing and portfolio strategy; also conducted licensing negotiations with competitor.
Defended Levi Strauss & Co. in a patent infringement and importation investigation, related to laser-fading of denim, against 17 global clothing brands. Aggressively developed key defense, positioning Levi Strauss & Co. for favorable pre-trial settlement.
In re Certain Laser Abraded Denim Garments, ITC Investigation No. 337-TA-930.
Representing Respondent ARRIS in a patent infringement and importation investigation brought by OpenTV/Nagra/Kudelski, related to digital content and voice command technology. Trial is estimated for November 2017 before Administrative Law Judge Theodore R. Essex. In re Certain Digital Television Set-Top Boxes, ITC Investigation No. 337-TA-1041.
Defended ScentAir against competitor Prolitec in E.D. Wisconsin patent infringement case filed in 2012 related to commercial scent diffusion products (Case No. 12-CV-483-RTR). Successfully petitioned for inter partes review of both patents-in-suit, resulting in stay of litigation in 2013. In 2014 the USPTO Patent Trial & Appeal Board invalidated both patents and denied Prolitec's motion to amend. The Federal Circuit upheld both decisions in 2015. http://www.law360.com/articles/734448/fed-circ-backs-ptab-s-air-freshener-patent-invalidation
Represented plaintiff-patentee Cargill in complex Markman hearing and jury trial in D. Oregon (2003) related to high stability canola oil, resulting in determination of patent infringement, validity and damages after ten-day trial before Judge Michael W. Mosman.
Represented Complainant Cypress Semiconductor in initial phases of patent infringement and importation investigation related to semiconductor chips.
In re Certain Static Random Access Memories, ITC Investigation No. 337-TA-792 2011
Represented defendant LG Electronics in patent infringement case in E.D. Texas (2007) related to media download management. Successfully obtained stay of litigation pending reexamination. Reexamination resulted in cancellation of all claims, with only three narrow new claims emerging from USPTO. Settled shortly thereafter on terms entirely favorable to client.
Represented Complainant Microsoft against Respondent Alcatel-Lucent in patent infringement and importation investigation related to computer telephony and unified messaging. Chief Administrative Law Judge Paul J. Luckern found infringement and validity for Microsoft after five-day trial.
In re Certain Unified Communications Systems, ITC Investigation No. 337-TA-598 2007
Represented defendants Microsoft and SAP in a patent infringement case related to software cod
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Georgetown University Law Center, J.D. (2004) cum laude
Stanford University, B.S., Mechanical Engineering (1994)
Stanford University, B.A., Political Science (1994)
District of Columbia (2005)
U.S. Patent and Trademark Office (2006)
U.S. Court of Appeals for the Federal Circuit
U.S. Court of Federal Claims
U.S. District Court for the Eastern District of Virginia
U.S. District Court for the District of Columbia
U.S. District Court for the Eastern District of Wisconsin
Intellectual Property Owners Association (IPO), Standing Committee on the International Trade Commission, Member (2012-Present)
International Trade Commission Trial Lawyers Association (ITCTLA), Member (2008-Present)
Graduate, National Institute for Trial Advocacy (NITA) Deposition Program (San Diego 2006), Expert Deposition Program (San Diego 2006), and Trial Skills Program (New Orleans 2008)
The HNBA/Microsoft Intellectual Property Law Institute (IPLI), Member
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