Joe Zito

Joseph J. Zito

Practice Areas

  • IP Litigation
  • Licensing
  • Technology Transfers
  • Patent Prosecution
  • Bar Memberships

  • U.S. Patent and Trademark Office
  • D.C.
  • Maryland
  • Education

  • North Carolina State University, BS.Econ
  • North Carolina State University, BS.Phys
  • Tulane Law School, J.D.
  • Joseph J. Zito, Of Counsel, has a BS in Economics/Physics from North Carolina State University and a JD from Tulane. Mr. Zito is a registered patent attorney and Intellectual Property litigator with over 27 years of experience. He is a member of twelve Federal District Courts, three Federal Appellate Courts and the United States Supreme Court and has litigated throughout the entire Federal Court System, including twenty three states, Federal Appellate Courts, the Court of Federal Claims, and the International Trade Commission.

    Mr. Zito is admitted to practice in Maryland, the District of Columbia, the U.S. Patent and Trademark Office. Mr. Zito represents Fortune 500 corporations, mid size businesses, start ups and individual inventors in patent, copyright, trademark, trade dress, design patent, software, trade secret, unfair competition and intellectual property litigation, mediation and arbitration, actively defending accused infringers and enforcing the rights of intellectual property owners. Mr. Zito has forty published decisions including several precedential appellate decisions from the United States Court of Appeals for the Federal Circuit, and a decision from the United States Supreme Court. Experienced in numerous bench trials, jury trials and appeals, he has obtained many multi-million dollar verdicts and preserved markets for numerous corporations.

    Mr. Zito has successfully litigated patent matters in a broad range of technology, including: pharmaceuticals, computers, software, semiconductors, parallel processors, telecommunications, VOIP, internet packet transport, distributed computing, electronic circuit design, electro-mechanical, mechanical, chemical, business method, internet data and media systems, automotive, medical, music, movies, agriculture and optical devices.

    Mr. Zito also engages in corporate counseling, due diligence studies; licensing and representation in inter-parties matters before the United States Patent and Trademark Office, and other governmental agencies.

    Mr. Zito is rated in the top five percent of Intellectual Property Litigation attorneys in Washington D.C. and top five percent in Maryland for 2007, based on the survey of more than 35,000 lawyers in the District of Columbia and 21,000 in Maryland and based upon a review of performance and experience by an independent panel.

    Publications & Presentations
    Contact Mr. Zito

    Classen Immunotherapies Inc. v. Biogen IDEC, 659 F3d 1057, 100 USPQ2d 1492 (Fed. Cir. 2011)

    Contech, Inc., v. BaySaver, Inc. (D.MD 2007)

    Kernius v. Int'l Elecs., Inc., (D.MD 2007)

    Tse v. Apple Computer, Inc., 2006 U.S. Dist. LEXIS 68451 (D. MD. 2006)

    Kernius v. Int'l Elecs., Inc., 433 F. Supp. 2d 621; (D.MD 2006)

    Classen Immunotherapies, Inc. v. King Pharms., Inc., 466 F. Supp. 2d 621 (D. MD. 2006)

    Classen Immunotherapies, Inc. v. Biogen Idec, 2006 U.S. App. LEXIS 10809 (Fed. Cir. 2006)

    Classen Immunotherapies, Inc. v. King Pharms., Inc., 178 Fed. Appx. 13 (Fed. Cir., 2006)

    Classen Immunotherapies, Inc. v. King Pharms., Inc., 466 F. Supp. 2d 621 (D.MD. 2006)

    Classen Immunotherapies, Inc. v. King Pharms., Inc., 403 F. Supp. 2d 451 (D. MD. 2006)

    Classen Immunotherapies, Inc. v. Biogen Idec, 381 F. Supp. 2d 452; (D.MD, 2005)

    Mylan Pharms., Inc. v. Kremers Urban Dev. Co., 2004 U.S. Dist. LEXIS 391 (D.Del. 2004)

    Rose v. United States, 55 Fed. Cl. 307; (U.S. Ct. Fed. Claims 2003)

    Waymark Corp. v. Porta Sys. Corp., 334 F.3d 1358; 67 U.S.P.Q.2D 1303 (Fed. Cir. 2003)

    Waymark Corp. v. Porta Sys. Corp., 2002 U.S. Dist. LEXIS 26533, (S.D.FL. 2002)

    Waymark Corp. v. Porta Sys. Corp., 2002 U.S. Dist. LEXIS 26526, (S.D. FL. 2002)

    Catalina Lighting, Inc. v. Lamps Plus, Inc. 295 F.3d 1277 (Fed. Cir. 2002)

    Waymark Corp. v. Porta Sys. Corp., 245 F.3d 1364; 58 U.S.P.Q.2D 1456 (Fed. Cir. 2001)

    Spectrum Creations, Inc. v. Catalina Lighting, Inc., 2001 U.S. Dist. LEXIS 11861, (W.D. TX. 2001)

    Ambu, Inc. v. Kohlbrat & Bunz Corp., 2000 U.S. Dist. LEXIS 241; 53 U.S.P.Q.2D (BNA) 1414, (W.D. NC. 2000)

    Waymark Corp. v. Porta Sys. Corp., 2000 U.S. Dist. LEXIS 22462, (S.D. FL. 2000)

    Eastern Am. Trio Prods. v. Tang Elec. Corp., 97 F. Supp. 2d 395; 54 U.S.P.Q.2D 1776, (S.D.N.Y. 2000)

    Lamps Plus Inc. v. Home Depot USA, Inc., 1999 U.S. Dist. LEXIS 22777; 57 U.S.P.Q.2D 1311, (C.D. CA. 1999)

    Holmes Prods. Corp. v. Catalina Lighting, Inc., 67 F. Supp. 2d 10 (D. Mass. 1999)

    Bazz, Inc. v. Catalina Lighting, Inc., 1998 U.S. Dist. LEXIS 21771; 49 U.S.P.Q.2D 2009, (S.D.FL. 1998)

    Black & Decker v. Catalina Lighting, 42 USPQ 1254, (E.D. VA. 1997)

    Thomas Am. Corp. v. Fitzgerald, 968 F. Supp. 154 (S.D.N.Y. 1997)

    Modine Mfg. Co. v. United States Int'l Trade Comm'n, 75 F.3d 1545; 37 U.S.P.Q.2D 1609 (Fed. Cir. 1996)

    Black & Decker v. GSL Eng'g, 1996 U.S. Dist. LEXIS 21566, (E.D. VA. 1996)

    Tsakanikas Global Techs. v. Uniden Am. Corp., 1996 U.S. Dist. LEXIS 14009; 39 U.S.P.Q.2D 1795, (D. MD. 1996)

    Black & Decker v. Catalina Lighting, 1996 U.S. Dist. LEXIS 20920, (E.D. VA 1996)

    Black & Decker v. GSL Engineering, 41 USPQ 1377, (E.D. VA 1996)

    AutoScribe Corp. v. Goldman & Steinberg, 33 U.S.P.Q.2D 1758; 47 F.3d 1164 (C.A. 4th Cir. 1994)

    Laerdal Medical Corp. v. Ambu, Inc., 877 F. Supp. 255 (D. Md. 1995)

    In the Matter of Certain Condensers, Parts Thereof and Products Containing Same,

    Including Air Conditioners for Automobiles Investigation No. 337-TA-334, 1994 ITC LEXIS 733, USITC Publication 2731,

    United States International Trade Commission, February 1994.

    Matindale Hubbell Rating: Av Preeminent


    US v. Universal Security Instruments, Inc. (USITC 1987) Represented Defendant in patent litigation action before the International Trade Commission action regarding the importation of battery powered smoke detectors.
    Dantoni v Virginia Mills, Inc. (EDVA 1989)
    Represented Plaintiff in patent infringement litigation on chemical composition and method of manufacture of laboratory materials . Obtained reasonable royalty after Jury Trial, appeal and remand.
    Tsakanikas v. Omron (MD 1991)
    Represented Plaintiff in asserting telecommunications patent against multiple infringers. Obtained over $7,000,000 in royalties from forty-one companies.
    HMA v. HMA (MD 1991)
    Represented plaintiff in trademark dispute. Achieved settlement requiring defendant to change name.
    Watters v. EnRad, Inc. (MD 1991)
    Represented corporate officers in corporate dissolution.
    HomeSure, Inc. v. RTCA (SDNY 1992)
    Represented plaintiff in patent infringement litigation over radiation testing equipment. Obtained reasonable royalty.
    Tsakanikas v. Inter-Tel, (MD 1992)
    Represented Plaintiff in asserting telecommunications patent against multiple infringers. Obtained significant royalty payments from forty-one companies.
    Tsakanikas v. Verifone, (MD 1992)
    Represented Plaintiff in asserting telecommunications patent against multiple infringers. Obtained significant royalty payments from forty-one companies.
    Kearns v. Chrysler (MI 1992)
    Represented owner of patent for windshield wipers.
    Modine Mfg. v Showa USA (USITC 1993)
    Represented defendant in patent infringement litigation over the importation of automotive heat exchangers before International Trade Commission. Achieved holding of non-infringement at ITC Hearing. Upheld on appeal to the U.S. Court of Appeals for the Federal Circuit.
    Abstract Asso. v. US (Ct.Fed.Claims 1994)
    Represented plaintiff in patent infringement litigation in the Court of Federal Claims, against the United States over digital photocopy machines manufactured by Xerox. Obtained reasonable royalty.
    Xerox v. Levine, (MD 1994)
    Represented patent holder in defense of declaratory judgment action brought by Xerox as counter suit to Court of Federal Claims action over digital photocopy machines sold to the United States.
    Brigman v. Metal Arrester, (MD; TX & NC 1994)
    Represented plaintiff in patent infringement action for automotive oil filtration patent. Obtained reasonable royalty prior to trial.
    Tsakanikas v. OKI, (MD & CA 1994)
    Represented Plaintiff in asserting telecommunications patent against multiple infringers. Obtained significant royalty payments from forty-one companies.
    TGT, Inc. v. JetFax (MD & CA 1994)
    Represented Plaintiff in asserting telecommunications patent against multiple infringers. Obtained significant royalty payments from forty-one companies.
    Laeradal, Inc. v. Ambu, Inc. (MD 1994)
    Represented defendant in medical device patent litigation. Settled during jury trial.
    Showa USA v. Modine Mfg. (WDOH 1995)
    Represent plaintiff in patent infringement action over automotive heat exchange technology.
    TGT, Inc. v. Motorola (NDIL 1995)
    Represented Plaintiff in asserting telecommunications patent against multiple infringers. Obtained significant royalty payments from forty-one companies.
    TGT, Inc. v. Matsushita (MD 1995)
    Represented Plaintiff in asserting telecommunications patent against multiple infringers. Obtained significant royalty payments from forty-one companies.
    TGT, Inc. v. Casio (MD 1995)
    Represented Plaintiff in asserting telecommunications patent against multiple infringers. Obtained significant royalty payments from forty-one companies.
    Critzos v. Martial Arts Masters, (MD 1995)
    Represented plaintiff in copyright action involving photographs. Obtained damages and sanctions.
    AutoScribe v. Intell-A-Check (MD; NJ & 4thCir App.1995)
    Represented plaintiff in infringement action over financial software.
    AutoScribe v. Direct Check (MD 1995)
    Represented plaintiff in infringement action over financial software.
    Martel v. Hurley (DC 1995)
    Represented defendant against assertion of firearm manufacturing patent. Settled.
    Abstract Associates v. Minolta (MD 1995)
    Represented plaintiff in patent infringement litigation over digital photocopy machines. Obtained reasonable royalty.
    Pollin v. NCMC (MD 1996)
    Represented software patent holder in Arbitration proceeding with licensee.
    Black & Decker v USI, Inc., (EDVA 1996)
    Represented Defendant in litigation over five flashlight patents. Settled prior to trial.
    Black & Decker v GSL, Inc., (EDVA 1996)
    Represented Defendant in litigation over five flashlight patents. Settled prior to trial.
    Tsakanikas v. Uniden, Inc., (MD 1996)
    Represented Plaintiff in asserting telecommunications patent against multiple infringers. Obtained significant royalty payments from forty-one companies.
    Abstract Associates v. Panasonic (MD 1997)
    Represented plaintiff in patent infringement litigation over digital photocopy machines. Obtained reasonable royalty.
    Pure 1 v. Visshill-Tech, (DC 1997)
    Represented plaintiff in patent infringement litigation over water filtration technology. Obtained reasonable royalty.
    Reese v. SWBell (NC 1997)
    Represented plaintiff in assertion of Caller ID patent.
    Thomas Amer. v Fitzcom, Inc. (SDNY1997)
    Represented defendant patent holder in declaratory judgment action for non-infringement and invalidity. Obtained favorable decision from District Court after Bench Trial, Upheld on Appeal.
    Keene v. Canondale (MD 1997)
    Represented plaintiff copyright holder in suit over copyrighted video. Obtained damages for use of video.
    Bazz, Inc. v. Catalina Lighting (SDFL 1998)
    Represented defendant accused of patent infringement. Obtained a decision from the Court establishing a lack of damages.
    Sprint Int'l v. Tang Electronics (EDNY 1998)
    Represented defendant in copyright infringement action over advertising materials. Suit settled without damages.
    Herbal Animals v. Potomac GreenTech (MD 1998)
    Represented plaintiff in design patent, trademark, trade dress and copyright suit over stuffed animal design. Obtained damages and injunction.
    Abstract Associates v. Mita (MD 1998)
    Represented plaintiff in patent infringement litigation over digital photocopy machines. Obtained reasonable royalty. Waymark v. Porta Systems (SDFL 1998)
    Represented plaintiff in patent infringement action over battery monitoring equipment in telecommunications industry. Obtained two favorable decisions from the U.S. Court of Appeals for the Federal Circuit overturning decisions from the District Court.
    Trisonic v. Tang Electronics (SDNY 1998)
    Represent defendant in design patent, trade dress and copyright action over telephones and advertising materials. Obtained favorable judgment on patents and trade dress issues at Bench Trial.
    Ambu Inc. v. Kohlbrat & Bunz (MD/NC 1998)
    Represented Plaintiff in patent infringement action involving emergency medical devices.
    Head Sport AG v. Wilson Sporting Goods (MD 1998)
    Represented defendant in patent and unfair competition action involving tennis racquet design and advertising. Settled.
    Rose v. US Navy (Ct.Fed.Claims 1998)
    Represented plaintiff for infringement of patent on a filter to remove oil from water used in Naval Vessels. Obtained favorable decision at Bench Trial and damages from U.S. Navy and U.S. Department of Defense.
    Pincharming v. Dalow & JCPenney (MD 1998)
    Represented plaintiff for infringement of jewelry patent. Obtained reasonable royalty settlement.
    Catalina Lighting v. Holmes Products (EDMA 1998)
    Represent plaintiff in enforcement of lamp patent and defense against counter asserted lamp patent. Obtained injunction and settled.
    Levine v. Mita Industrial Co. (MD 1998)
    Represented Plaintiff in enforcement of multiple patents involving photocopier technology, obtained reasonable royalty.
    Abstract Associates v. Toshiba (MD 1999)
    Represented plaintiff in patent infringement litigation over digital photocopy machines. Obtained reasonable royalty. Mitchell v. Hitachi (NDCA 1999)
    Represented plaintiff in patent infringement litigation over parallel microprocessor computer architecture. Obtained reasonable royalty.
    Catalina Lighting v. Kitchler Ind's (SDFL 1999)
    Represented plaintiff in declaratory judgment action over lamp design patents. Settled.
    Brigman v. Magnetic Filtration, Inc. (MD 1999)
    Represent plaintiff in patent infringement action for automotive oil filtration patent. Obtained reasonable royalty.
    LSSA, Inc. v. CableScope, Inc. (MD 1999)
    Represent plaintiff in software copyright infringement. Obtained injunction and payment of damages.
    Telogy, Inc. v. Hot Haus, Inc. (EDMA 1999)
    Represent leading Voice over IP plaintiff in asserting seven telecommunications patents for VoIP against infringer. Case settled.
    Lamps Plus, Inc. v. Home Depot (SDCA 1999)
    Represented defendant Home Depot in patent infringement action. TRo defeated, case dismissed.
    Catalina and Home Depot v. Pacific Coast Lighting (SDFL 1999)
    Represented Plaintiffs Home Depot and Catalina Lighting in declaratory judgment action to invalidate two lamp patents. Jury Trial.
    Spectrum Lighting, Inc. v. Catalina Lighting, Inc. (WDTX 2000)
    Represented defendant Catalina Lighting in patent infringement, design patent, and trade dress action. Suit dismissed.
    Abstract Associates v. Pentax, Polaroid & Epson America (MD 2001)
    Represented plaintiff in patent infringement litigation over digital camera technology. Obtained reasonable royalty.
    Levine v. Hewlett Packard (MD 2001)
    Represented plaintiff in patent infringement litigation over digital photo printers and cameras. Obtained reasonable royalty.
    Hamilton v. VocalTec (MD 2001)
    Represented plaintiff in patent infringement litigation over collaborative project and document development software networked and on-line white board applications. Obtained reasonable royalty.
    Hamilton v. ComWeb et al. (MD 2002)
    Represented plaintiff in patent infringement litigation over collaborative project and document development software networked and on-line white board applications. Obtained reasonable royalty.
    Pincharming v. Hirschberg Schutz, Inc. (MD 2002)
    Represented plaintiff in patent infringement litigation over innovative jewelry products. Obtained preliminary injunction, reasonable royalty and permanent injunction.
    International Mould Engineering v. Brinkman Instruments (MD 2002)
    Represented plaintiff in patent infringement litigation over medical test apparatus. Obtained reasonable royalty.
    Dr. MacGregor v. Thermo -Electron Corporation (MD/CA 2002)
    Represented plaintiff in patent infringement litigation over artificial cardiac devices. Obtained multi-million dollar royalty.
    Mylan Pharmaceuticals v. KUDCo Pharmaceuticals (DE 2002)
    Represented plaintiff in pharmaceutical patent infringement litigation over generic versions of Prilosec. Obtained $50,000,000 royalty in 2005.
    In Re: Certain Plastic Bags (USITC 2003)
    Represented defendant in International Trade Investigation.
    Galbreath v. Wal-Mart Stores (MD 2003)
    Represented Wal-Mart in defense of patent litigation. Settled
    JDA v. Banc One,Inc. (IL 2003)
    Represented plaintiff in copyright infringement litigation over architectural drawings.
    Classen Immunotherapies v. GSK, Biogen Merck & Chiron (MD 2004)
    Representing plaintiff in patent infringement litigation over immunization technology.
    Rose v. Advanced Water Systems (MD 2004)
    Represented plaintiff in patent infringement litigation over water treatment devices. Settled.
    The Audubon Commission v. Philadelphia Insectarium (TTAB 2004)
    Represented plaintiff in trademark cancellation proceeding. Trademark Cancellation obtained.
    Cowdin v. Creative Crafts de Mexico (TX 2004)
    Represented international artist in copyright infringement litigation over statues. Obtained resonable royalty and injunction and return of goods.
    Ja-Ru v. Funtastic (TXED) (FLND 2004)
    Represented defendant in patent, trademark and copyright litigation over toy patents and catalog. Suit dismissed.
    Classen v. King Pharma (MD 2004)
    Representing patent holder of pharmaceutical business method patent.
    Iraci v. Meyer Plows (PA ED 2006)
    Represented owner of patent for electronic control of snow plows. Obtained reasonable royalty in Jury Trial.
    Armannov. Puricle and WalMart (CA CD 2006)
    Represented owner of patent on toilet bowl technology. Settled.
    Quantum Research v. Apple (MD 2005)
    Representing UK owner of patent on capacitive sense technology used in iPods, Apple notebooks and Mighty Mouse.
    Tse v. Apple, Napster, Music Match, Sony & Real Networks (CA ND 2005)
    Representing HK owner of patent for Digital Rights Management.
    Kernius v. IEI at al. (MD 2005)
    Representing owners of patent for Internet Caller ID technology.
    Cross v. PlayBoy Enterprises (CA CD 2006)
    Represented owner of T-shirt design patent. Settled.
    ConTech v. BaySaver Technologies (MD 2007)
    Represented defendants in water filtration patent case. Invalidated patent.
    Harvey v. Apple (MD 2007)
    Representing owner of patent for charger technology.
    AFMC v. IBM (TX ED 2007)
    Representing owner of patent for software.
    SuperBag v. EuroPackaging & Inteplast (TX SD 2007)
    Representing owner of patent for plastic bags.
    Pyramide USA v. Hi5 Climb (MD 2007)
    Declaratory judgment suit against owner of patent for a climbing wall.
    EO Mfg v. Ridge Tool & Superior Tool (MD 2008)
    Representing owner of patent for hand tool.
    Green v. ConAgra (MD 2008)
    Representing owner of patent for microwave cooking container.