(571) 899-3942
Areas of Practice: Patents, Trademark Prosecution, Validity Analysis and Opinion Writing
Joseph W. Berenato, III has more than 40 years of experience in all aspects of intellectual property, including patent and trademark prosecution, litigation, infringement and validity analysis and opinion writing. Mr. Berenato has also successfully represented parties in investigations conducted by the International Trade Commission. Since 1993, Mr. Berenato has been appointed as a Rule 53(a) Special Master to oversee pre-trial discovery, establish trial schedules, conduct Markman claim construction hearings, and conduct trials.
Background:
Joseph W. Berenato, III was born in Darby, Pennsylvania, on March 29, 1953, and is admitted to practice in the District of Columbia and Virginia, and before various Federal Courts, including the United States Supreme Court, the District of Columbia Court of Appeals, the Court of Appeals for The Federal Circuit, the United States District Court for the District of Columbia, and the United States District Court for the Eastern District of Virginia, and the Virginia Supreme Court. Mr. Berenato is registered to practice before the U.S. Patent and Trademark Office. He received his Bachelor of Science degree in Chemical Engineering in 1975 from Lehigh University, and his Juris Doctor degree from the University of Baltimore in 1982. Mr. Berenato is a member of the District of Columbia Bar Association and the Virginia State Bar. He is also a member of various other bar associations, including the American Intellectual Property Law Association. Mr. Berenato has served as a court appointed Special Master in patent litigation.
Mr. Berenato has authored articles that have appeared in several publications, including Trial Magazine and the Japanese Intellectual Property Journal.
Representative Cases:
• Jacobs Vehicle Equipment Co. v. Pacific Diesel Brake, Case no. 3:93-CV-1093 (RNC). First chair for 3 week patent trial before United States District Court for the District of Connecticut.
• Capital City Bank Group, Inc. v. Capitol City Bank & Trust Company, Case No. 5:03-cv-256(HL), United States District Court for the Middle District of Georgia. Achieved favorable settlement in a trademark infringement suit for the plaintiff.
• Citigroup Inc. v. Capital City Bank Group, Inc., Opposition No. 91177415. Successfully represented Capital City Bank in an Opposition filed by Citibank that was dismissed in client’s favor, with decision affirmed by the Federal Circuit Court of Appeals, 671 F.3d 1344(Fed. Cir. 2011).
• Certain Weather Stations and Components Thereof, Investigation No. 337-TA-537. Obtained dismissal of patent-based investigation on behalf of domestic distributor of weather station products.
• Top Producer Systems, Inc. v. Software Sciences Ltd. Case No. 97-415-MA. Achieved preliminary injunction in a trademark infringement suit that resulted in favorable settlement for the plaintiff. 43 U.S.P.Q. 2d 1312 (D. Or. 1997)
• Lambton Mfg. Co. v. Young, Case No. 92-0065-O(CS). Obtained preliminary injunction and summary judgment of willfulness for patent owner. 833 F. Supp. 610 (W.D. Ky. 1993)
• Great Lakes Press Corp. v. Froom, Case No. CIV-86-233T. Obtained summary judgment in action to obtain title to patent. 695 F. Supp. 1440 (W.D. Ny. 1987)
• Certain Convertible Rowing Exercisers, Investigation No. 337-TA-212. Secured determination in favor of Respondent in patent-based investigation on behalf of domestic distributor of rowing exercisers. Determination affirmed.
• Special Master Matters
• Lear Corporation v. NHK Seating of America, Inc., NHK Spring Company Ltd., and NHK International Inc., Case No. 13-12937. Special Master United States District Court for the Easter District of Michigan, Southern Division. Rule 53(a) Special Master to oversee summary judgment motions and certain discovery motion.
• Shire Development LLC v. Osmotica Pharmaceutical Corp. Case No. 12-cv-00904-AT. Special Master United States District Court for the Northern District of Georgia. Rule 53(a) Special Master to oversee pretrial discovery, conduct Markman claim construction hearing, and provide claim construction recommendation in an ANDA proceeding under the Hatch-Waxman Act.
• Nycomed US Inc. v. Glenmark Generics Ltd. Case No. 08-5023. Special Master United States District Court for the Eastern District of New York. Rule 53(a) Special Master to oversee pretrial discovery, conduct Markman claim construction hearing, and provide claim construction recommendation in a proceeding under the Hatch-Waxman Act.
• Eastman Kodak Co. v. Agfa-Gevaert N.V., et al, Case No. 02-cv-6564 T-F. Special Master- United Stated District Court for the Western District of New York. Rule 53(a) Special Master to oversee pre-trial discovery, conduct Markman claim construction hearing, and try the case. (Decision affirmed)
• Eastman Kodak Co. v. Sony Corp., et al, Case No. 04-cv-6095(T)(F) and Sony Corp. v. Eastman Kodak Co., Case no. 04-cv-6547(T)(F). Special Master- United Stated District Court for the Western District of New York. Rule 53(a) Special Master to oversee pre-trial discovery, establish trial schedule, and conduct Markman claim construction hearing. (2006)
• Hewlett Packard Company v. Xerox Corporation, Case No. 98-CV-6217. Special Master- United Stated District Court for the Western District of New York. Rule 53(a) Special Master to oversee pre-trial discovery. (1998)
• Excel, Inc. v. Redcom, 6:93-cv-06078-MAT. Special Master- United Stated District Court for the Western District of New York. Rule 53(a) Special Master to oversee pre-trial discovery. (1993)