D. Joseph English practices in the areas of intellectual property law and litigation, including patents, trademarks and copyrights with particular emphasis in the acquisition and litigation of intellectual property rights in a variety of technical arts.

Mr. English represents U.S. and foreign clients in the acquisition of patent rights in diverse technologies such as aircraft engines, fuel cells, discharge and LED lighting, thin film coatings, highly pure chemical compositions, telecommunications, semiconductors, wireless communications and computer software, and assists clients in establishing competitive patent review and enforcement programs.

Mr. English has served as litigation counsel both in the enforcement of, and defense against patent infringement lawsuits in federal courts throughout the United States. He has assisted litigation clients in developing appropriate strategies to challenge asserted patents before the PTAB and has prepared and filed petitions seeking Inter Partes Review (IPR) for a variety of clients. Mr. English has also successfully represented patent owners in defending challenges before the PTAB.

Mr. English counsels clients in the development, maintenance and protection of brand identifiers, including conducting registrability investigations, prosecuting trademark applications, initiating and defending inter partes proceedings before the United States Patent and Trademark Office, reviewing marketing materials and coordinating international protection programs. Mr. English has represented clients in litigation regarding trademark infringement and unfair competition.

Mr. English is registered to practice before the United States Patent and Trademark Office and admitted to practice in Virginia and various federal courts, including the Court of Appeals for the Fourth Circuit and the United States Supreme Court.

Prior to entering private practice, Mr. English served as a nuclear submarine officer in the U.S. Navy. Mr. English is a graduate of the Columbus School of Law of The Catholic University of America and a graduate of the United States Naval Academy (B.S., mechanical engineering).

Representative Matters

  • Counsel to a manufacturer in successfully defending a challenge before the PTAB brought by a major competitor. All claims in the client’s patent were found to be patentable.
  • Counsel to various clients in challenging patents before the PTAB. Successfully obtaining a final decision in each matter, or settlement of each matter, favorable to the clients.
  • Counsel to a manufacturer in obtaining summary judgment of non-infringement of one patent and invalidity of a second patent for metal decking. Successfully opposed the appeal to the Court of Appeals for the Federal Circuit. Obtained settlement client found favorable regarding its counterclaims for unfair competition against plaintiff.
  • Counsel to a manufacturer in the granting of a TRO, preliminary and permanent injunctions, and an award of damages against an ex-employee accused of theft of trade secrets and breach of employment contract.
  • Counsel in obtaining a favorable settlement in a patent and trade dress infringement action.
  • Counsel to registrant in a cancellation proceeding based on priority before the Trademark Trial and Appeal Board.
  • Counsel as defendant-counterplaintiff in obtaining a jury verdict of trademark infringement by plaintiff. Created precedential law on trademark use and abandonment in the Fourth Circuit Court of Appeals.
  • Counsel to defendant in patent infringement action in Eastern District of New York regarding semiconductor process patents. Successfully obtained verdict of no inducement on plaintiff’s $300 million claim.
  • Counsel to defendant in multiple patent infringement actions in various United States District courts related to the manufacture of wireless communication devices. Successfully obtained settlement of all cases favorable to client.
  • Manage the worldwide patent programs for clients in various technologies.

Admissions

  • U.S. Patent and Trademark Office
  • Virginia
  • Supreme Court of Virginia
  • U.S. Court of Appeals for the Fourth Circuit
  • U.S. District Court for the Eastern District of Virginia
  • Supreme Court of the United States

Not admitted in D.C. Practice in D.C. limited to matters and proceedings before federal courts and agencies.

Education

  • The Catholic University of America, Columbus School of Law, J.D., 1998
  • United States Naval Academy, B.S.M.E., 1986

Experience

  • Duane Morris LLP
    - Partner, 2002-present
  • Carter, Ledyard & Milburn, Washington, D.C.
    - Counsel, 2000-2001
  • Rogers & Killeen, Alexandria, Virginia
    - Partner, 1998-2000
    - Associate/Patent Agent, 1995-1998
  • United States Navy
    - Nuclear Submarine Officer, 1986-1994

Professional Activities

  • Alexandria Businessman's Association
  • Virginia State Bar