Josh Calabro
Josh frequently represents clients in inter partes reviews (IPRs) and other proceedings before the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB). Josh also has substantial transactional experience, conducting due diligence investigations, drafting opinion letters on validity and infringement, and negotiating settlement and license agreements.
Josh joined Venable upon its 2018 merger with the boutique intellectual property firm Fitzpatrick Cella, Harper & Scinto, where he had worked for nearly a decade.
Prior to attending law school, Josh worked at Yale University’s technology transfer office. There, he assessed the commercial viability of inventions arising from laboratories in Yale’s school of medicine and engineering departments and strategized on procuring intellectual property (IP) protection for those inventions. Josh also conducted materials science research at Yale, developing lead-free alloys with applications in the electronics industry for their use as solders (Calabro, J.D. et al., “Magnetically driven three-dimensional manipulation and inductive heating of magnetic-dispersion containing metal alloy,” Proceedings of the National Academy of Sciences (PNAS) (2010)).
Related Practices
Related Industries
Experience
Representative Matters
- Cross-examined two expert witnesses and conducted direct examinations of three witnesses across two trials in which the jury returned a favorable verdict on all 32 infringement and validity questions and awarded more damages than client sought. The patents related to crystalline forms of nicotinamide riboside chloride used in a dietary supplement to slow the rate of aging
- Cross-examined an expert witness on non-infringement in a bench trial, after which the court found all asserted claims of a client’s patent were infringed, while also upholding the validity of those claims. The patent related to taxanes for treating cancer
- Cross-examined a fact witness on a defendant’s failed attempts to design around a client’s patent in a jury trial that yielded a judgment valued at $200 million. The patent related to composite active particle formulations for dry powder inhalers
- Argued the Markman hearing that resulted in a favorable claim construction decision finding a patentee had disclaimed key subject matter during prosecution of a patent covering brackets for orthodontic braces. The case was promptly dismissed with prejudice following that decision, as the plaintiff could no longer maintain its infringement allegations
- Successfully argued against a motion for summary judgment of indefiniteness, with the court finding that the specification set forth adequate structure for a means-plus-function claim term concerning downloading. The patent related to a method of partitioning an MP3 file for emulated streaming, and the matter settled favorably following the decision
- Drafted a comprehensive request for declaration of interference that was granted in full, resulting in the invalidation of more than 500 claims of 16 patents related to dynamic random access memory (DRAM) systems
- Developed the arguments and drafted the preliminary responses that resulted in a denial of institution for all claims challenged in three serial inter partes review (IPR) petitions filed by major electronics companies against a client’s patent on a user input device for synchronizing data streams to conserve computer resources
- Drafted petitions that led to the invalidation of all challenged claims of multiple patents related to loyalty rewards programs and payment systems across nine IPR proceedings
- Developed the arguments and drafted the briefs on subject matter eligibility that invalidated all claims of a patent to a technique for tracking physical objects using three-dimensional spatial mapping and spectral analysis. This was the first reported decision by a court on the patent eligibility of blockchain technology. The decision also prompted the dismissal with prejudice of related claims for breach of contract and misappropriation of trade secrets
- Secured a decision dismissing trade secret misappropriation claims on summary judgment in a case relating to the U.S. Navy’s multi-billion-dollar program for combat ships. The court found, after extensive discovery, that plaintiffs brought the claims one year too late under the statute of limitations
- Achieved a summary judgment dismissal of trade secret misappropriation claims related to annuity products, after nearly four years of litigation, which included deposing the plaintiff’s liability and damages expert witnesses and defending all depositions of the defendants’ many fact and expert witnesses
- Uncovered dispositive prior art very early in a patent infringement and unfair competition case that led to a quick dismissal of all claims with prejudice, without any payment to plaintiff. The asserted patent related to a medical device for treating obstructive sleep apnea
Representative Clients
- Dentsply Sirona
- IBM
- Mars
- Pozen
Insights
Credentials
Education
- J.D. University of Pennsylvania Law School 2011
- Mark E. Lefever Prize (for the best paper in the field of law and economics)
- B.S. Mechanical Engineering Yale University 2007
- L.C. Lichty and E.O. Waters Prize (for high scholarship and original research in mechanical engineering)
Bar Admissions
- New York
Court Admissions
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the Third Circuit
- U.S. Court of Appeals for the Sixth Circuit
- U.S. District Court for the Eastern District of New York
- U.S. District Court for the Southern District of New York
Recognition
- The Best Lawyers in America, Ones to Watch, 2021 – 2022, 2024