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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.

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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.

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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 Medical 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 class="wp-block-heading">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

Supreme Court Rejects Parody Free Speech Defense for Jack Daniel’s-Like Dog Toy

Congratulations to Merchant &amp; Gould’s attorneys who have been named 2023 Super Lawyers, distinguishing themselves in their legal practice. Only the lawyers in the top 5 percent of the total lawyers in the state were selected to be included in the Super Lawyers list.



 Scott W. Johnston, Minneapolis – IP Litigation Heather J. Kliebenstein, Minneapolis – IP Litigation William D. Schultz, Minneapolis – IP Litigation Anthony R. Zeuli, Minneapolis – IP Litigation Rachel Zimmerman Scobie, Minneapolis – IP Litigation



 In addition, Merchant &amp; Gould is proud to announce that one attorney was recognized as 2023 Rising Stars. Rising Stars are attorneys 40 and under who have been practicing law for 10 years or less. They are selected annually based on nominations from other attorneys and an independent review board. No more than 2.5 percent of attorneys are selected for Rising Stars in any state. 



Joseph W. Dubis, Minneapolis – IP Litigation 



Every year, Super Lawyers selects attorneys from all firm sizes and more than 70 practice areas on a state-by-state basis. Super Lawyers selects attorneys using a patented multiphase process, which includes evaluating them on 12 indicators of peer recognition, professional achievement, and independent research.

Merchant & Gould Announces 2023 Super Lawyers & Rising Stars

Merchant &amp; Gould is pleased to announce that Minnesota Lawyer recognized Minneapolis litigation associate <a href="https://www.merchantgould.com/people/joseph-w-dubis/">Joseph Dubis, Ph.D.</a>, as an “Up &amp; Coming Attorney,” chosen for his professional accomplishments, leadership in the community, and commitment to the legal profession.



Each year, Minnesota Lawyer recognizes a group of new attorneys who are off to a fast start in their first decade of practice, already making an impact within their firms and community. The nominations were reviewed and judged by an outside panel and the Minnesota Lawyer team.



Joe has extensive experience in complex patent, copyright, trademark, and trade secret matters, as well as work in appellate and post grant proceedings. He focuses on identifying the critical aspects of the case that may drive a favorable settlement or be persuasive to a trial fact finder.



“Joe applies his technical, scientific background and Ph.D. in biology and biomedical science to help clients push the envelope with their cutting-edge technologies. As a proponent for all areas of science and technology, he is always learning new things and helping clients expand and protect their ideas. The combination of his tool box of scientific skills and attention-focused background distinguish his proficiency and advance his approach with multidimensional litigation cases,” said Rachel Zimmerman Scobie, partner at Merchant &amp; Gould, who nominated Joe.



In addition to his client work, Joe co-manages Litigation Paralegals across Merchant &amp; Gould’s seven offices and oversees their work – combining his litigation knowledge, attention to detail, and management skills. He coordinates the firm’s legal writing and legal research training efforts for new associates and summer associates. Joe is also responsible for coordinating activities for Merchant &amp; Gould&#8217;s Minneapolis-based summer associates, striving to identify unique activities to show off the firm and the Twin Cities. In the community, he volunteers with the Volunteer Lawyers Network in the Hennepin County Housing Court, providing pro bono legal assistance and protection for evicted tenants and helping ensure they get the housing they need. In addition, Joe volunteers and helps advance opportunities for youth through his long-time involvement with Scouts BSA (formerly Boy Scouts of America). As an Eagle Scout, he is also active in coordinating activities for the local Eagle Scout Network, a professional organization for Eagle Scouts of all ages, occupations, and experiences.



“He is already making a difference in advancing business and legal industries, a tribute to how he is trailblazing, leading, mentoring, and empowering with his knowledgeable and caring approach,” Rachel added.



View the Minnesota Lawyer <a href="https://minnlawyer.com/2023/07/24/up-coming-unsung-legal-heroes-announced/">announcement here</a>.&nbsp; Congratulations, Joe!

Minnesota Lawyer Recognizes Litigation Associate Joe Dubis as “Up & Coming Attorney”

Litigation

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Anne-Marie Larkin

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Joseph W. Dubis, Ph.D.

Super Lawyers Rising Star, 2022-2023 
Selected by Best Lawyers in America: One to Watch, 2021-2024 
Mpls. St. Paul Magazine Top Attorneys in Minnesota Rising Stars, 2022 
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.

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