Careers

At M&G, we dedicate ourselves to finding the best solutions to our clients’ challenges, no matter where it takes us.

Case Studies

Industries

Offices

About Merchant & Gould

Pages

People

News Room

Practices

Staff

Home | Merchant & Gould P.C.

An associate in Merchant &amp; Gould’s Minneapolis office, Joseph Dubis has extensive experience in complex patent, copyright, trademark, and trade secret matters as well as work in appellate and post grant proceedings. Joe focuses on identifying the critical aspects of the case that may drive a favorable settlement or be persuasive to a trial fact finder.

contentpilot/introduction

Joseph is a&nbsp;summa cum laude&nbsp;graduate of the University of St. Thomas with a degree in biology. Following undergrad, Joseph received a doctorate in biology and biomedical science with an emphasis in neurosciences from Washington University in St. Louis. While there, he used functional magnetic resonance imaging to investigate how groups of regions of the human brain, known as networks, manifest task instructions during tasks. His attention-focused research on adults may be used to help diagnose attention disorders such as attention deficit hyperactivity disorder and Tourette syndrome in children.

core/paragraph

Joseph Dubis graduated&nbsp;summa cum laude&nbsp;and salutatorian from Mitchell Hamline School of Law. At Mitchell Hamline, he was a staff member on the&nbsp;Cybaris®&nbsp;Intellectual Property Law Review, publishing an article entitled “Inter Partes&nbsp;Review: A Multi-Method Comparison for Challenging Patent Validity,” and was later an executive editor for the journal.

Joe has been honored as a Minnesota Lawyer Attorney of the Year, Best Lawyers: Ones to Watch, and Minnesota Monthly’s Best Lawyers in Minnesota.

Originally from Milwaukee, Wisconsin, Joseph was active in soccer, high school band, and the Boy Scouts of America. In his free time now, Joseph enjoys participating in and watching a variety of sports and being outdoors and on the lake fishing and boating. He also likes to cook and bake when time allows.

Mitchell Hamline School of Law, J.D., 2016, 

Washington University in St. Louis, Ph.D Biological and Medicinal Sciences (Neurosciences), 2013

University of St. Thomas, B.S. Biology, 2008

Joseph Dubis, Intellectual Property Attorney

he / him / his

Medical Devices

Sports & Fitness

Minneapolis

Merchant &amp; Gould is pleased to announce that <a href="/people/james-w-beard/">James W. Beard</a>, a Denver partner, and <a href="/people/joseph-w-dubis/">Joe Dubis</a>, a Minneapolis associate, have been named Litigation Paralegal Co-Supervisors, effective Jan. 1, 2022. They replace <a href="/people/william-d-schultz/">Will Schultz</a> who served as Supervisor for more than five years. 



James and Joe will manage the firm’s Litigation Paralegals across Merchant &amp; Gould’s seven offices and oversee their work on depositions, witness preparation, exhibits, court preparation and research, as well as reviewing docketing and case file management procedures. &nbsp;They will also coordinate communication with and development of the group, helping the team as it implements new technologies.&nbsp; With more than 50 litigators and litigation support team members, the firm’s Litigation Practice Group has extensive IP trial and litigation experience.&nbsp;&nbsp;



“In their co-supervisor roles, James and Joe combine their litigation knowledge with their attention to detail and management skills to supervise this very important paralegal team with the Litigation Practice Group. Together, they bring their leadership and insight to the team,” said Christopher J. Leonard, Managing Director and CEO of Merchant &amp; Gould.



While his practice involves all facets of intellectual property law, James focuses on patent, copyright, and trademark and trade dress litigation for clients from a diverse range of industries. He works in all stages of litigation, from general advice and counseling to complex discovery, trials and appeals.



Joe practices all areas of intellectual property litigation proceedings including patent, copyright, and trademark litigation; appellate work; and post grant proceedings. Joseph’s motivation to become a lawyer was partly to help bridge the gap between inventors, scientists, and developers and the intellectual property protection they deserve. Since beginning as a litigation associate, Joe has developed extensive skills in the field of copyright disgorgement remedies.



Congratulations, James and Joe!

James Beard and Joe Dubis Named Litigation Paralegal Co-Supervisors

MINNEAPOLIS – April 17, 2019 – Merchant &amp; Gould, a national intellectual property law firm, is pleased to announce that Vexilar, Inc., a Minneapolis-based pioneer in sonar technology, fish finders, and the marine business, won an important IPR victory against Deeper UAB, which unsuccessfully challenged the validity of Vexilar’s patent directed to wireless fish finders using independent displays, such as smart phones and tablets.&nbsp; (<a href="https://www.uspto.gov/sites/default/files/documents/Deeper-UAB-v.-Vexilar-Inc.-IPR2018-01310-%28Paper-7%29-%28002%29.pdf" target="_blank" rel="noopener">Deeper UAB v. Vexilar Inc., No. IPR2018-01310</a>)



The Merchant &amp; Gould team filed a laser-focused Patent Owner’s Preliminary Response, arguing Deeper did not meet its burden to show a reasonable likelihood that the prior art invalidated Vexilar’s patent and that Deeper’s expert’s declaration was conclusory. The Patent Trial and Appeal Board (PTAB) denied Deeper’s IPR petition, as well as its request for rehearing. Notably, the PTAB increased the status of the denial decision by designating the decision as “Informative,” which indicates that the decision should be followed in most cases because it provides important guidance from the PTAB.



“We are very pleased with the result, which shows that it’s critical for petitioners to make sure they have strong evidence for each ground before going to the PTAB and challenging the validity of a patent,” said Thomas Leach, partner, Merchant &amp; Gould.&nbsp; “The PTAB exercised its discretion finding Deeper’s validity challenge would not be a good use of the Board’s resources and denied the IPR petition.”&nbsp;



“Particularly after the Supreme Court’s decision in SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018), this decision, and its designation as Informative, serves as an indication and a guidepost from the PTAB that it is willing to entirely deny institution if the Petitioner does not have good arguments for every challenged claim in the petition,” stated Joseph Dubis, Ph.D., associate, Merchant &amp; Gould.



The Merchant &amp; Gould team included Thomas Leach, partner, Minneapolis; Joseph Dubis, Ph.D., associate, Minneapolis; Andrew Lagatta, partner, Minneapolis; and support from others.



“It’s been rewarding to watch the Merchant &amp; Gould team develop and execute a strategy to successfully defend our patented technology and market,” said Steve Baumann, President, Vexilar, Inc.&nbsp;



<h2>About Vexilar, Inc.</h2>



Vexilar, Inc. has been in the marine business since 1960, with a history of innovation in fishing products.&nbsp; Based in Minneapolis, the company is considered to be a “pioneer in sonar technology.”&nbsp; <a href="http://www.vexilar.com">www.vexilar.com</a>

Merchant & Gould Successfully Protects Vexilar’s Patent

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in The Best Lawyers in America: Ones to Watch 2021 Edition. 



These awards are recognitions given to attorneys who are earlier in their careers for outstanding professional excellence in private practice in the United States. Our &#8220;Ones to Watch&#8221; recipients typically have been in practice for 5-9 years.



Our methodology for determining these awards remains the same as it did when Best Lawyers was founded almost 40 years ago: peer-review. Lawyers are the best resource to provide feedback on the caliber of work performed by their peers.



MINNEAPOLIS, MN Joseph W. Dubis Ph.D.&nbsp;– Intellectual Property Law



Paige S. Stradley&nbsp;– Litigation &#8211; Intellectual Property



Michael A. Erbele&nbsp;&nbsp;– Technology Law

Merchant & Gould Attorneys Named by Best Lawyers as the Best Lawyers in America: Ones to Watch 2021 Edition

Litigation

Post Grant Proceedings

Appellate

Chemical & Life Sciences

Internet, Cybersecurity, & E-Commerce

Anne-Marie Larkin

Associate

Joseph W. Dubis, Ph.D.

Mpls. St. Paul Magazine Top Attorneys in Minnesota Rising Stars, 2022 
Selected as by Best Lawyers in America: One to Watch, 2021-2023 
Attorney of the Year &#8211; Groups, by Minnesota Lawyer, 2017 
Eagle Scout

Awards & Recognition

Monthly Columnist for Bench &amp; Bar of Minnesota, the official publication of the Minnesota State Bar Association
Quoted, Fed. Circ.&#8217;s FRAND Decision Will Put Spotlight On Juries, Law360, December 13, 2019
NYIPLA Endorses Patent Office Change to Phillips Claim Construction Standard, IPWatchDog, August 3, 2018

Joseph W. Dubis, Ph.D.

Practices

Industries

Education

Admissions

Awards & Recognition

Publications & Speaking