Biography
Joe Mellema is a partner in Blank Rome’s Business Litigation group and a versatile litigator with a national practice. He represents clients in hospitality, real estate, business, commercial, technology, and intellectual property (“IP”) disputes in both federal and state courts. Joe’s experience spans complex matters such as business litigation; contract, corporate, and partnership disputes; fraud and shareholder derivative actions; hospitality litigation; intellectual property litigation, including trade secret misappropriation, patent, trademark, copyright, and unfair business practices disputes; and sophisticated artificial intelligence (“AI”) matters.
Joe is highly skilled in patent, trade secret, and trademark enforcement, preparation, and prosecution, as well as trademark enforcement and opposition proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. He has considerable experience litigating and prosecuting patents in a variety of technical fields, including AI, machine learning, algorithms and software, optical and optoelectronic devices, computer networks and databases, semiconductor devices and processes, computer hardware and software, mechanical devices, and pharmaceuticals.
With dual degrees in electrical engineering and physical sciences, and prior experience as a systems engineer at Raytheon Company working on next-generation sensors and systems for the Navy’'s F/A-18 Super Hornet, Joe brings a unique technical perspective to his legal practice.
He has particular experience in the pharmaceutical and medical devices industries, representing companies in patent-related disputes, IP portfolio management, and due diligence projects. Joe has advised specialty and brand pharmaceutical companies in disputes under the False Claims Act, involving Abbreviated New Drug Applications (“ANDA”), and pertaining to trade secrets for proprietary processes for preparing drug formulations and compositions. He has also successfully litigated multibillion-dollar complex pharmaceutical cases under the Hatch-Waxman Act.
Joe was selected to the 2017 Southern California Super Lawyers “Rising Stars” list for Intellectual Property.
Outside the Firm
Joe is an avid martial arts enthusiast and enjoys rock climbing, backpacking, building computers, and spending time with his wife and children. He is actively involved in several charitable non-profit organizations by investing significant time and resources, including by serving with a local Orange County, California-based organization devoted to helping people in crisis.
Experience
Representative Patent and Intellectual Property Cases:
- Patent Litigation: Represented a leader in digital storage solutions in a patent lawsuit against a non-practicing entity’s infringement allegations involving computer storage products.
- Patent Litigation: Represented a multinational manufacturer of computer peripherals and software in patent lawsuit against a non-practicing entity’s infringement allegations involving computer peripherals.
- Patent Litigation: Represented a global technology company that specializes in digital printing technology against a non-practicing entity’s infringement allegations involving color calibration used in printers.
- Copyright Litigation: Represented a California-based supplier of metal detecting equipment and accessories, including underwater detectors and digging tools, in copyright infringement action concerning metal detector software for metal detector devices.
- Patent Litigation: Represented a leading supplier of automated microelectronic assembly machines and contract assembly services in patent infringement lawsuit against a manufacturer of fully automated, high-speed, high-precision, and flexible eutectic and epoxy die bonding systems, concerning fully automated, ultra-high precision die-attach and epoxy dispensing tools used for the fabrication of complex micro-assemblies.
- Inter Partes Review: Represented a leading supplier of automated microelectronic assembly machines and contract assembly services in inter partes review concerning patents over fully automated, ultra-high precision die-attach and epoxy dispensing tools used for the fabrication of complex micro-assemblies.
- Contract Dispute: Represented a nonprofit fighting poverty, disease, and inequity around the world in first-ever plaintiffs-side lawsuit concerning a technology platform’s breach of an agreement not to pursue patents using Foundation proceeds.
- Patent Litigation: Represented an American video game developer, publisher, hardware, and digital distribution company in multi-defendant consolidated litigation concerning lip synchronization technology used in animation.
- Patent Litigation: Represented an American manufacturer of software and computer services in patent lawsuit brought by non-practicing entity’s allegations involving printer technology.
- Patent Litigation: Represented an American manufacturer of software and computer services in multi-defendant lawsuit concerning bundled software provided with the company’s computers.
- Patent Litigation: Represented a biopharmaceutical company and a major global drug company in district court patent lawsuit over methods relating to analyzing molecules after enzymatic digestion of the drug enoxaparin.
Representative Business and Commercial Disputes:
- Investment Dispute: Represented defendants in an alleged investment scam that was tried to a jury; obtained a directed verdict in favor of clients.
- Partnership Dispute: Represented plaintiff in arbitration over partnership dispute and prevailed, obtaining an award finding the managing member guilty of fraud and breach of fiduciary duty and attorneys’ fees; successfully negotiated buy-out of partnership interest.
- Partnership Dispute: Represented plaintiff in real estate development dispute concerning high-end luxury condominiums and docking rights; successfully resolved dispute between client and other partners.
- Commercial Lease Dispute: Represented owner in breach of lease dispute involving long-term lease for dental implant center; successfully resolved through arbitration and favorable settlement for owner.
- Hotel Construction Dispute: Represented and resolved multiple contract disputes between owner and development partners for a hotel in Camarillo, California.
- Commercial Lease Dispute: Represented lessee in breach of lease lawsuit between high-end luxury dining establishment and landlord for commercial premises in Orange County, California.
- Business Litigation: Represented plaintiff in dispute concerning acquisition of subsidiary; obtained bench verdict of fraud and negligent misrepresentation based on false representations and concealment; successfully obtained award of full attorneys’ fees.
- Commercial Real Estate Dispute: Represented defendants in real estate dispute involving neighboring hotel owner and multi-level parking structure involving long-term lease and easement rights; successfully obtained favorable settlement on behalf of defendants.
News & Views
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Article
California AI Rules for Lawyers and Arbitrators Pass Senate, Head to Assembly
Daily JournalSharon R. Klein, Mark S. Adams, Joseph J. Mellema, Alex C. Nisenbaum
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Article
Noteworthy Publication
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Press Release
Market-Leading Hospitality Team Joins Blank Rome in California, Expanding Coast-to-Coast Capabilities and Global Reach
James R. Butler, David A. Sudeck, Mark S. Adams, Jeffrey T. Myers, Joseph J. Mellema
Affiliations
Memberships
- Association of Business Trial Lawyers
- Los Angeles County Bar Association
- Orange County Bar Association
- Los Angeles Intellectual Property Law Association
Joe is a member of the Los Angeles Intellectual Property Law Association, the Association of Business Trial Lawyers, and the Orange County Bar Association, as well as the Los Angeles County Bar Association, Antitrust and Unfair Business Practices Section, where he served as vice chair from 2010 to 2012 and secretary/treasurer from 2009 to 2010.
Credentials
Admissions
- United States Court of Appeals for the Ninth Circuit
- California
- U.S. District Court - Central District of California
- U.S. District Court - Northern District of California
- U.S. District Court - Southern District of California
- U.S. Patent and Trademark Office
- United States Court of Appeals for the Federal Circuit
- U.S. District Court - District of Colorado
Education
- Loyola Law School, JD
- University of Southern California, BS, Electrical Engineering
- Biola University, BS, Physical Sciences
