Image of Joseph T. Leone

Joseph T. Leone

Attorney
Print Full Bio

Education:

  • J.D., Marquette University
  • M.S., Organic Chemistry, Marquette University
  • A.B., Chemistry, Kenyon College

Admissions:

  • Illinois
  • Wisconsin
  • U.S. Patent and Trademark Office (USPTO)
  • U.S. Courts of Appeals for the Federal, 7th, and 4th Circuits
  • U.S. District Court for the Northern District of Illinois
  • U.S. District Court for the Eastern and Western Districts of Wisconsin
  • U.S. Supreme Court
Joe is Co-Chair of the Intellectual Property practice group.  Clients around the world turn to Joe to secure and enforce their intellectual property rights. This includes securing patents, trademarks, copyrights, and trade secrets, as well as asserting and defending these rights in the state and federal courts. Joe is frequently engaged in opinion work, drafting freedom to operate opinions for U.S. manufacturers and foreign companies importing goods into the U.S. He serves as an expert witness in state and federal actions regarding Patent & Trademark Office practices and procedures. Additionally, he regularly represents both applicants and opposers in actions before the Trademark Trial & Appeal Board.

Affiliations

  • Co-Chair – DeWitt's Intellectual Property practice group
  • Member (and past president) of the Wisconsin Intellectual Property Law Association
  • Member (and past board member) of the Wisconsin State Bar Intellectual Property Law Section
  • Member - University of Wisconsin Extended Campus - MS in Applied Biotechnology Advisory Board
  • Member and Secretary, Catholic Diocese of Madison Foundation Board of Directors ($75 million in assets managed)
  • Member of the American Chemical Society

Awards & Recognitions

  • Best Lawyers® – Best Lawyers in America – Copyright Law, IP Litigation, Patent Litigation, Patent Law, Trademark Law – Since 2011

Client Highlights

Since 1971, Dave Strassman has owned and operated DRS Asphalt Paving, an asphalt paving contractor and asphalt wholesaler. Apart from the world of asphalt, anybody who has crossed paths with Dave knows two things about him:  1) he tinkers with and  re-engineers almost everything he touches; and  2) he is fiercely committed to the welfare of America’s  wounded veterans.

Those two qualities are most aptly on display in Dave’s  U.S. Pat. No. U.S. Pat. No. 8,201,653 – “Seats for  self-balancing vehicles.” The patent covers seats for use on  Segway-type,  self-balancing vehicles so that the vehicle can be driven by amputees or those with compromised leg strength. Through the  non-profit program Segs4Vets, these modified vehicles are provided to our wounded warriors free of charge. The website for Segs4Vets states its motivation  most elegantly:

Segs4Vets is an unprecedented  grass-roots effort sustained and administered by volunteers representing grateful Americans, who passionately believe that when those serving our nation are sent into harm’s way and suffer serious injury and permanent disability they must have every resource and tool available to them, which will allow them to fulfill their dreams and live the highest quality of  life possible.”

For more information on the Seg4Vets program, including how to donate, please click here. We salute Dave’s ingenuity, patriotism, and unfailing dedication to America’s  wounded veterans.

Clients

Joe’s clients run the gamut from multinational corporations and large research universities to startups and individual inventors. Recent clients for whom Joe has drafted patent applications include Marquette University, King’s College London, The University of Chicago, University of Saint Thomas, Bayer MaterialScience, Bharat Biotech International, Breakthrough Futures, Crown Operations International, Edgenet, Evets Corporation (maker of Danelectro®-brand guitars), Genome Technologies, and nPoint. Joe’s trademark clients include Country Kitchen Restaurants, Evets Corporation, Diesel Injection Service, Patriot Outfitters, and many others.

Notable Representations

  • Defending Proclip USA and Brodit AB in National Products, Inc.. v. Proclip USA, Inc. and Brodit AB (Western District, WI, Case No:  20-CV-439) in a patent infringement lawsuit involving three patents (Brodit is located in Sweden; Proclip is in the US)
  • Expert witness for the defense in BOS GmbH v. Macauto USA, Inc., (Eastern District, MI, Case No: 4:17-CV-10461), a patent infringement lawsuit involving invalidity and advice-of-counsel defenses. Macauto secured complete victory on summary judgment (dismissal with prejudice), based in part on Leone’s expert testimony.  From the Court’s decision at p. 16: “Mr. Leone liken[s] the ‘659 Patent to its foreign family members, and based on the same use of reference numbers, liken[s] the asserted claims to their [invalidated] foreign counterparts”
  • Defending Sonic Foundry in Trademark Opposition: RLP Ventures, LLC v. Sonic Foundry, Inc. TTAB case no. 90/064,439 (Trademark Trial & Appeal Board)
  • In patent and trademark litigation, Joe represented the defendant and counter-claim plaintiff Fujian Quan Yu (a Chinese stair parts manufacturer) in a false patent marking and breach of settlement action in the Middle District of North Carolina. SV International Inc. and ECMD, Inc. v. Fujian Quan Yu Industry Co., Ltd., 1:09-CV-00862-WO-WWD
  • In complex federal litigation involving allegations of trademark infringement, unfair competition, minority shareholder oppression, trade secret misappropriation, and other business-related issues, Joe is representing the defendant and counter-claim plaintiff, Novomedicus, in the Eastern District of Wisconsin. Starsurgical, Inc. v. Novomedicus et al. 10-CV-1156-LA
  • Joe represented Crown Operations International in a successful appeal to the Court of Appeals for the Federal Circuit that resulted in a precedential opinion: Crown Operations International Ltd. v. Solutia Inc., 289 F.3d 1367, 62 USPQ2d 1917 (Fed. Cir. 2002)
  • SV Int'l, Inc. v. Fu Jian Quanyu Indus. Co., 820 F. Supp. 2d 677 (M.D.NC 2011) (“SV II”): In a second round of litigation between these two parties, the court held that the settlement agreement in the first case (“SV I”) did not bar Fu Jian’s counter-claims in the second case
  • Starsurgical, Inc. c. Aperta, LLC, 832 F. Supp. 2d 1000 (E.D. WI 2011): Decision on an injunction motion regarding use a trademark comprising a living person’s last name

Recent Patents

  • U.S. Pat. No. 11,024,119 - "Method and system for card shuffle integrity tracking"

  • U.S. Pat. No. D919,832 -  "Anesthesia medication template"

  • U.S. Pat. No. 10,968,472 - "Multi-color reporter cells for detecting HIV-1"

  • U.S. Pat. No. 10,934,563 - "Bioconversion of levulinic acid in genetically engineered hosts"

  • U.S. Pat. No. 10,889,598 - "Method to make scalable ultrathin hexagonally faceted metal-organic framework (MOF) and method of using same for detecting explosives and other nitro-aromatic compound"

  • U.S. Pat. No. 10,876,602 - "Built-in motor for bicycle and electric powered bicycle"

  • U.S. Pat. No. 10,870,646 - "Oxazolidinones and pharmaceutical compositions thereof for treating bacterial infections, including infection of Mycobacterium tuberculosis"

  • U.S. Pat. No. 10,858,70 - "Method to predict heritable canine non-contact cruciate ligament rupture"

  • U.S. Pat. No. 10,829,602 - "Transparent and homogenous cellulose nanocrystal-lignin UV protection films"

  • U.S. Pat. No. 10,790,536 - "Organosilicon-containing electrolyte compositions having enhanced electrochemical and thermal stability"

  • U.S. Pat. No. 10,781,195 - "Process to produce 5-hydroxymethylfurfural (HMF) from carbohydrates using a solvent system containing water and a polar aprotic solvent"

  • U.S. Pat. No. 10,730,833 - "Synthesis of diindolylmethanes and indolo[3,2-b]carbazoles, compounds formed thereby, and pharmaceutical compositions containing them"

  • U.S. Pat. No. 10,730,816 - "Method of selectively oxidizing lignin"

  • U.S. Pat. No. 10,724,098 - "Method to predict likelihood of inherited peripheral neuropathy in mammals"

  • U.S. Pat. No. 10,723,779 - "Alpha/beta-polypeptide analogs of glucagon-like peptide 1"

  • U.S. Pat. No.10,676,449 -  "Electronically activated strained alkynes"