Joseph S. Presta
Joseph Presta has helped secure verdicts and settlements totaling hundreds of millions of dollars for plaintiffs and mounted successful defenses for clients facing multimillion-dollar claims.
An accomplished patent litigator and prosecutor, Joseph Presta is a Nixon Vanderhye Shareholder dedicated to helping clients secure, protect and advance their intellectual property assets. He regularly represents some of the world’s most prominent high-tech companies and manufacturers.
In the litigation arena, Joe has served as lead trial counsel in many complex disputes involving patents, trademarks, and antitrust issues. He also maintains an active appellate practice, representing numerous clients before the U.S. Court of Appeals for the Federal Circuit, and handles inter partes reviews at the U.S. Patent and Trademark Office (USPTO). Joe takes great pride in his ability to identify – and remain focused on – the critical issues of a case. He credits much of his success to effectively employing cutting-edge graphics that help simplify issues for the court and the jury.
In 2018, Joe and Nixon Vanderhye colleague Robert Rowan obtained a significant win on behalf of the firm’s Shuffle Tech client and two other plaintiffs in Shuffle Tech et al v. Scientific Games et al, a case tried before the U.S. District Court for the Northern District of Illinois. The jury awarded the plaintiffs $105 million, which was trebled by the judge to $315 million. This victory was cited by The National Law Journal as one of the top 10 verdicts of 2018.
Joe is also a skilled patent prosecutor. While much of his practice is focused on computer and electronics innovations, he has written and prosecuted hundreds of patent applications for a wide range of technologies. In addition, Joe provides clients with opinions on infringement and validity issues, and delivers proactive counsel regarding sophisticated patent matters and IP-related strategies.
Experience
- Won a $315 million verdict on behalf of Shuffle Tech and two other plaintiffs in a sham patent infringement litigation / Walker Process fraud case in the U.S. District Court for the Northern District of Illinois. The case was predicated on the enforcement of two fraudulently obtained patents for automatic card shufflers for regulated casinos, resulting in a complete monopoly of the relevant market in violation of Section 2 of the Sherman Act. As post-trial motions were pending, the case settled for $151.5 million.
- Secured a $39 million jury verdict for Prime Time Games in a five-week trial involving complex patent and antitrust issues.
- Won a $3 million patent infringement verdict against Mercury Marine for the firm’s client following a three-week jury trial in which he presented the opening and closing statements, and conducted direct and cross-examinations of all witnesses.
- Represented Sharp in successfully asserting several LCD patents against a competitor in a case before the ITC, obtaining the largest value exclusion ever issued at the time.
- Obtained verdicts of non-infringement for clients in the food packaging and jukebox industries.
- Represented Nintendo in numerous litigations involving its Wii videogame system, including a noteworthy case that resulted in obtaining a judgment of invalidity of all asserted claims.
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IP Litigation
- Patents
- IPRs, PGRs, CBMs, Reexams, and Derivations
- Trademarks and Unfair Competition
- Antitrust
- Trade Secrets
- Domain Name
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Patents
- Prosecution
- Post-Grant Proceedings
- Due Diligence
- Domestic and Worldwide Portfolio Management
- Enforcement
- PTAB Practice
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Trademark and Brand Protection
- Filing and Prosecution of Trademark Applications
- Virginia
- U.S. Patent and Trademark Office
- U.S. Court of Appeals for the Federal Circuit
- U.S. District Court for the Eastern District of Virginia
- Supreme Court of Virginia
- J.D., George Mason University School of Law, 1993
- B.S. in Systems Analysis and Engineering, Computer Systems specialty, cum laude, George Washington University, 1988
