Joseph E. Lee

Senior Counsel
Minneapolis
3200 IDS Center, 80 South Eighth Street
Minneapolis, MN 55402
D: 612.766.6094
Contact My Assistant
Leah S. Schwenke
D: 612-766-6019

Education

University of Minnesota Law School
   J.D.
   Walter J. Trogner Scholar, full merit scholarship

University of Minnesota
   B.S. Mechanical Engineering, highest distinction

Bar and Court Admissions

U.S. Patent and Trademark Office, 2005
U.S. District Court, District of Minnesota, 2003
Minnesota State Bar, 2003

Professional Affiliations

American Bar Association
Federal Bar Association
Hennepin County Bar Association
Intellectual Property Owners Association

Awards & Recognition

Minnesota Super Lawyers Rising Star, 2014-2016

Publications & Speaking

Leveraging New Patent Office Post Grant Proceedings To Decrease Litigation Risk and Cost, co-authored with Rob Kalinsky and Andrew Lagatta, Intellectual Property Today, July, 2013

Federal Circuit Opens Door to Bad-Faith Penalties against NPE’s, co-authored with Daniel McDonald, Executive Counsel- Dec 2011/ Jan 2012

Bite Your Tongue - Too Much Information Can Threaten a Patent, Co-authored with Daniel McDonald, Executive Counsel - Nov/Dec 2009

Early Assessment Can Streamline Patent Litigation, Co-authored with Daniel McDonald, Upsize Magazine - May 2008

Beyond Rule 11: The Case For Full Early Assessment, Co-authored with Daniel McDonald, IP Law 360 - December 4, 2007

The Latest on In Re Seagate: Are Courts Restricting Plaintiffs' Allegations of Willful Infringement?, Minnesota Continuing Legal Education

Joe has extensive experience in both patent acquisition and enforcement.  Joe played significant roles in patent litigation at every stage from pre-suit investigation though trial and appeal, including a patent jury trial lasting over thirty days. Joe uses his patent litigation experience to prepare and prosecute patents that can be effectively licensed or otherwise enforced.  He has prepared, filed, and prosecuted hundreds of domestic and foreign patent applications.  A large part of Joe’s practice involves analyzing patentability and product clearance issues and providing design-around guidance.

Joe uses his Mechanical Engineering background to handle patent-related issues for a wide variety of technologies, including biomedical tools, automotive and motorcycle components, heavy machinery, water management systems, footwear constructions, firearms and accessories, outdoor gear, hunting accessories, archery components, sporting equipment, heating and cooling systems and semiconductor inspection equipment. Joe’s clientele ranges from solo inventors to large entities, such as 3M, Microsoft, Motorola, Honda, Donaldson Company, ADC Telecommunications, Red Wing Shoe Company, Vermeer and Rudolph Technologies.

Joe has been issued a United States patent on his own invention directed to a long range reactive shooting target that he designed, built, and filed patents on.  Below is a demo video of one of the prototypes he tested.  

Outside of the office, Joe enjoys various activities, including rock climbing (trad lead, sport lead and bouldering); riding his Triumph Daytona 675 on the track, Honda CRF250R on trails, and touring on his Harley Fatboy; backpacking, canoeing, snowboarding and backcountry skiing, bareboat sailing in the Caribbean, boxing, TIG welding, paddle boarding with his dog, mountain biking, hockey, reading and adventure travel.

 

Representative Cases

August Technology Corporation and Rudolph Technologies, Inc., v. Camtek Ltd., (2009), representing Plaintiffs won a complete jury verdict for 8 million in lost profits and an injunction against Defendant. Defeated Defendant's non-infringement, invalidity, and inequitable conduct defenses.


MEDIA CENTER

All Media
Events
1/29/16
Protecting Snow Sports Innovations and Brands
Merchant & Gould attorneys will be presenting two sessions on protecting innovation and brands at the SnowSports Industries America (SIA) Snow Show on January 29 at the Colorado Convention Center.Held annually for 60 years, the SIA Snow Show is the largest ...
Press Releases
11/12/13
Merchant & Gould Secures Limited Damages in Appeal for Semiconductor Patent Case
Federal Circuit overturns District Court decision in favor of Rudolph Technologies Inc. Merchant & Gould, a leading intellectual property law firm, announced today that two products of its client, Rudolph Technologies Inc., were found to not infringe ...
Press Releases
6/25/12
Merchant & Gould Client Vermeer Manufacturing Company Wins Litigation Battle Against The Charles Machine Works
District Court Grants Motion by Vermeer Manufacturing for Summary Judgment of Non-Infringement Merchant & Gould, an intellectual property law firm, today announced that its client Vermeer Manufacturing Company has prevailed in a patent litigation battle ...
Press Releases
4/2/12
Merchant & Gould Client Rudolph Technologies Awarded $1.29 Million After Judge Finds Camtek in Violation of Injunction Sanctions Include Double Damages Plus Attorney Fees
Merchant & Gould, an intellectual property law firm, today announced that its client Rudolph Technologies has been awarded $1.29 million, plus attorney’s fees, as a result of a contempt finding against its adversary, Camtek Ltd. Minnesota U.S. District ...
Articles
3/27/12
Camtek Fined $1.3M For Violating Ban On Computer Chip Sales
Articles
12/30/11
Federal Circuit Opens Door To Bad-Faith Penalties Against NPEs
Click here to read article co-authored by Dan McDonald and Joe Lee appearing in Executive Counsel.
Articles
11/30/09
Bite Your Tongue - Too Much Information Can Threaten a Patent
Articles
12/4/07
Beyond Rule 11: The Case For Full Early Assessment