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Joseph Myles



Joseph Myles is an Associate with Finnegan. He focuses on patent litigation in a range of patent venues, including district courts, the Patent Trial and Appeals Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), and the Court of Appeals for the Federal Circuit (CAFC). He leverages trial experience gained through interning at the D.C. Superior Court to represent high-tech companies through all phases of litigation.

Joseph is experienced in pre-litigation strategy, discovery, and motions practice, advising clients through the formation of patent-specific litigation positions, including infringement, validity, claim construction, and unenforceability. He drafts and oversees Patent Office challenges for petitioners and patent owners, including inter partes reviews, post-grant reviews, and ex parte reexaminations. Joseph counsels clients through the patent application process before the USPTO, including designing patent protection plans, managing large portfolios, and overseeing office action responses and examiner interviews.

Joseph drafts motions and claim construction briefing, investigates infringement and validity positions, and coordinates district court and PTAB trial strategy. He is well versed in using the 28 U.S.C. § 1782 discovery procedure to seek important litigation materials from U.S. parties for use in foreign patent infringement proceedings. He has written extensively on the uses of § 1782 discovery and participated in the formation of § 1782 practical guidance through The Sedona Conference. Joseph also assists clients with pre-litigation strategy, including drafting noninfringement opinions and investigating potential patent infringement.

Recent Articles by Joseph Myles

Recovering Fees and Expenses For U.S. Discovery Compliance in Foreign Litigation – Improbable Even When Possible

Under 28 U.S.C. Section 1782, parties engaged in (or expected to engage in) foreign litigation are empowered to  seek discovery in the United States for use in the foreign litigation. Specifically, under § 1782, foreign litigants may apply directly to any district court in the U.S. where a person or entity with information relevant to the foreign litigation can be located or found, and that court can order such discovery. If discovery is granted (which is usually the case), the party providing the discovery will typically bear the costs of providing it. As with any other discovery in the United States, the compliance costs are considered a “normal cost of doing business” and are not usually shifted to the party seeking discovery. However, Rule 45(d)(2)(B) does allow for nonparties to shift costs for discovery compliance in certain circumstances—i.e., where there is a “significant expense” arising from a specific order “compelling production or inspection.”  Yet, despite a fee-shifting mechanism for nonparties, courts have granted a very limited number of requests for the recovery of fees and costs for compliance in a § 1782 proceeding under Rule 45.

Induced Infringement: The Knowledge Requirement and When it is Established

To succeed on a claim of induced infringement, a patent owner must show that the accused infringer (1) actively encouraged infringement, (2) knew that the acts they induced constituted patent infringement, and (3) actuated direct patent infringement by those encouraging acts. In many courts, the knowledge requirement can be satisfied by service of a complaint for patent infringement itself. So, the accused infringer can start to incur liability at the onset of litigation. In the minority of courts, only pre-suit knowledge can satisfy the knowledge requirement. In those jurisdictions, the plaintiff must show the accused infringer knew about the alleged infringement before the onset of litigation. The amount of evidence required to show pre-suit knowledge at the pleading phase is an open question.