Overview

Josh Pond counsels clients on intellectual property challenges and opportunities, at the cross-roads of U.S. intellectual property in Washington D.C. Josh litigates patents before the U.S. International Trade Commission, the U.S. Patent & Trademark Office, the Eastern District of Virginia, and around the country. With this trial perspective, Josh advises startups and corporations on IP portfolio strategy, to bolster them for upcoming enforcement challenges.

Josh co-leads the firm’s ITC Section 337 team—shortlisted by Managing IP for “2018 ITC Firm of the Year.” Over the past year, Josh has served as lead ITC counsel for two complainants, eleven respondents, and four subpoenaed companies across eight investigations. Over the past decade, Josh has been to ITC trial for a dozen Fortune Global 500 companies, most recently in October 2018 for ARRIS and in April 2017 for Broadcom Corporation and seven of its semiconductor chip customers. Recent patent validity challenge highlights at the USPTO include a complete five-patent defense victory, as well as a two-patent invalidating win, with one win affirmed at the Federal Circuit and another on remand solely as to a proposed amended claim. Germany has featured prominently among recent global forums for Josh’s matters, as well as Canada, and China. Josh serves as a Member of George Washington Law’s Intellectual Property & Technology Law Board of Advisors, and an Editor of the ITC Trial Lawyers Association’s 337 Reporter Round-Up.

Prior to joining the firm, Josh 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, Josh 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. Josh leads the firm’s Pro Bono Veterans Initiative and represents our D.C. office on the firm’s Pro Bono Committee.

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Experience

Representing Lowe’s and Husqvarna in a patent infringement and importation ITC investigation brought by American carburetor maker Walbro, in its bid against Chinese competitor Ruixing, 6 other carburetor manufacturers, and 26 of their downstream equipment- and retailer-customers. Trial before Chief Administrative Law Judge Bullock is scheduled for July 2019 (Certain Carburetors).

Defended semiconductor powerhouse Broadcom and its seven downstream customers — Technicolor, HTC, ASUS, Comcast, Arista, NETGEAR, and ARRIS — in patent infringement and importation ITC investigation brought by Tessera Technologies related to semiconductor chip packaging technology. Prevailed in two of three asserted patents at trial before Administrative Law Judge Sandra Dee Lord and convinced the commission to review findings on the third patent (Certain Semiconductor Devices).

Asserted Broadcom’s patented streaming audio multimedia technology in ITC investigation seeking to prevent the importation of wireless speakers and other audio systems by Tessera subsidiary DTS and eight of its downstream technology customers (Certain Wireless Audio Systems).

Obtained complete victory for Reebok against RBX Active in a patent infringement and importation ITC investigation related to athletic shoe sole functionality after all respondents ultimately agreed to cease importation of the accused products (Certain Athletic Footwear). Currently pursuing damages in Oregon district court.

Globally enforcing medical device patents of preeminent surgeon against infringing surgical instruments of competitors, including pending suit before the Southern District of New York (Case No. 18-CV-1964), related actions in Düsseldorf, Germany and Ottawa, Canada, and a recently completed license agreement in Asunción, Paraguay.

Defended ARRIS in patent infringement and importation ITC investigation brought by Rovi and Tivo, concerning on-screen programing guide technology; completed five-day trial before Administrative Law Judge David P. Shaw to win final determination of no violation by ARRIS, affirmed by the full Commission. Advocacy for ARRIS continues before U.S. Customs & Border Protection and the Federal Circuit as to implications of the no-violation ruling. (Certain Digital Video Receivers).

Secured a favorable settlement for ARRIS in patent infringement and importation ITC investigation brought by OpenTV/Nagra/Kudelski involving digital content and voice command technology, as part of an aggressive multi-jurisdictional patent licensing strategy against Comcast and its suppliers (Certain Digital Television Set-Top Boxes).

Defended ScentAir against competitor Prolitec in E.D. Wisconsin patent infringement case 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. The USPTO's Patent Trial and Appeal Board ruled in favor of client ScentAir, finding all challenged claims unpatentable. The Federal Circuit affirmed as to one patent and remand is pending as to the second, solely as to a proposed amended claim (IPR Nos. 2013-00179 and -00180; Appeal Nos. 2015-1017 and 2015-1020). http://www.law360.com/articles/734448/fed-circ-backs-ptab-s-air-freshener-patent-invalidation

Favorably settled ITC investigation for Levi Strauss & Co. in RevoLaze’s investigation against 17 jeans brands related to laser fading of denim. (Certain Laser Abraded Denim Garments).

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.

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 (PGR2015-00022).

Counseled plaintiff-patentee Cargill in complex Markman hearing and jury trial in D. Oregon related to high stability canola oil, resulting in determination of patent infringement, validity and damages after ten-day trial before Judge Michael W. Mosman.

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Education

Georgetown University Law Center, J.D. (2004) cum laude

Stanford University, B.S., Mechanical Engineering (1994)

Stanford University, B.A., Political Science (1994)

Admissions

District of Columbia (2005)

Virginia (2004)

Court Admissions

U.S. Patent and Trademark Office

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

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Professional & Community Activities

George Washington Law School, Intellectual Property & Technology Law Board of Advisors, Member (2018-Present)

International Trade Commission Trial Lawyers Association (ITCTLA), Member (2008-Present) / Editor, ITCTLA 337 Reporter Round-Up (2018-Present)

PTAB Bar Association, Trials Committee Member (2016-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)

Intellectual Property Owners Association (IPO), Standing Committee on the International Trade Commission, Member (2012-2014)

The HNBA/Microsoft Intellectual Property Law Institute (IPLI), Member

Leads Kilpatrick Townsend’s Pro Bono Veterans Initiative

Kilpatrick Townsend Pro Bono Committee, D.C. Representative Member

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