Overview
With his in-house and government experience, Josh uses his broad insight to guide clients to protect and enforce their innovations, aligning IP strategy with business objectives through the full lifecycle of intellectual property challenges to minimize risk and maximize commercial impact.
Josh’s practice involves a broad range of technologies including all areas of telecommunications, 3GPP and 5G standards, AI and LLMs, quantum computing, electronic circuits, semiconductor devices and fabrication, solar technology, energy systems and storage, digital and optical signal processing, software applications, IoT and wearable devices, and advanced biomedical diagnostic technologies.
Having successfully advocated cases before federal courts and government regulators, Josh further assists clients in strengthening each innovative concept through its entire lifecycle. Josh led the post-grant practice at a major law firm to counsel client business decisions associated with offensive and defensive third-party patent disputes, including inter partes review at the U.S. Patent and Trademark Office, opinions of non-infringement and validity, portfolio analysis, landscape analysis, and due diligence.
Education & Admissions
Loyola University Chicago School of Law (J.D., 1999),
- cum laude
- Order of the Coif
University of Wisconsin - Madison (B.S., Electrical Engineering, 1988),
- Tau Beta Pi
Admissions
- Illinois
- United States Patent and Trademark Office
- Not admitted in Colorado. Admitted in Illinois and USPTO.
- Supreme Court of Illinois
- U.S. District Court for the Northern District of Illinois
- U.S. Court of Appeals for the Seventh Circuit
- U.S. Court of Appeals for the Federal Circuit
Experience
Representative Experience
- Built the second largest patent portfolio held by a Colorado entity, including numerous standard essential patents (SEPs).*
- Wrote and patented the entire portfolio defining Micronets technology.*
- Prosecuted and defended before the ITC the US display technology patent portfolio that resulted in a nationwide embargo against a Fortune Global 50 competitor and a $2 billion sale of a technology division.*
- Obtained patent grants for the nascent technology now referred to as Post Quantum.*
- Counseled state legislature on adoption of new state AI regulatory framework.*
- Created and led an IPR practice for an AmLaw 200 firm that successfully invalidated over 1000 claims of competitor patents.*
- Developed IP portfolio for Fortune 50 client that sold for nearly one-half billion dollars.*
- Created and led IPR and post-grant practice that successfully invalidated over 1000 claims of competitor patents.*
- Served as lead counsel in the successful defense of a $150 million automotive electronics patent infringement litigation.*
- Successfully mitigated a ransomware attack on a major healthcare institution that risked destruction and/or publication of protected medical information for millions of patients.*
* Experiences occurred prior to joining Dorsey.
Industries & Practices
Educational Publishing, Technology & Services
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- Artificial Intelligence
- Aviation
- Banking & Financial Institutions
- Corporate Governance & Compliance
- Creative Industries
- Cybersecurity
- Development & Infrastructure
- Digital Health
- Educational Publishing, Technology & Services
- Electric Power
- Emerging Companies
- Energy & Natural Resources
- FinTech
- Healthcare & Life Sciences
- Intellectual Property
- Intellectual Property Litigation
- Medical Devices
- Patent Prosecution & Strategy
- Privacy & Social Media
- Pro Bono
- Technology
- Telecommunications
- Trademark, Copyright + Advertising
- Video Games
Professional & Civic
Professional Achievements
- Chair of Professional Development, National Association of Patent Practitioners (NAPP)
- Faculty and Conference Presenter, Rocky Mountain Intellectual Property Institute
- Volunteer Patent Counsel, Mi Casa ProBoPat pro bono patent legal services
- HB21-112 Commissioner for the state of Colorado
