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Icon Of IP: Knobbe Martens' Joseph Re

By Kelly Knaub

Law360, New York (May 27, 2016, 1:31 PM ET) --

As a high school student in the 1970s, Joseph Re would hear his father, a federal New York judge, discuss the patent cases he occasionally heard, which spawned his interest in the intellectual property field where he is now a nationally recognized attorney known for handling high-stakes patent cases. While Re was growing up, conversations at the dining room table with his father, his mother — also an attorney — and his 11 siblings often centered on the cases his father would bring home. Despite this immersion in the law, Re longed to go to engineering school, while his parents always wanted him to go to law school. He ended up doing both, earning his undergraduate degree from the Rutgers University College of Engineering and his law degree from St. John's University School of Law, where his father taught law for more than 50 years. Re has since established a name for himself as a stellar trial and appellate attorney at Knobbe Martens Olson & Bear LLP, where he has led trial teams to stunning victories, helping clients such as global medical technology company Masimo Corp. win $134 million and $466 million awards. While Re, who tends to work for up-and-coming companies trying to break into health care markets, considers the Masimo cases to be his most significant wins, he doesn’t measure the success of a trial win by the magnitude of its jury awards. Having cases with real meaning is what counts, he said. “When people say what’s a significant case, they sometimes think it’s the size of the verdict,” Re said. “But that's really not what it's about in a lot of these cases. It's really about changing the standards, changing the way we do business, changing the way we administer health care.” Stories about Masimo are important, Re said, to remind people why we have the patent system, which is under attack. “Without the patent system, we wouldn't have this great technology that has saved so many patients — either their lives or their eyesight,” he added.

Joseph Re

During the first Masimo case, the company went to trial against Tyco Healthcare subsidiary Nellcor Puritan Bennet in 2004 for infringement of its patents covering pulse-oximetry medical devices that measure the oxygen level of a patient’s blood. Masimo CEO Joe Kiani told Law360 that during the trial he saw Re as an “amazingly hard-working, fast on his feet, brave, and very ethical lawyer who just did a fantastic job with his team of getting the truth out.” The company was very small and almost on the brink of bankruptcy, Kiani said, adding that if it had lost the case it probably would have gone out of business. Re persuaded the Federal Circuit to affirm the $134 million verdict and to enter a permanent injunction, ultimately allowing Masimo to settle with the company, which is now part of Medtronic. Fast forward a decade, and Re was once again at the helm of another trial for Masimo, this time against Philips Electronics North America Corp. In that case, Philips had admitted that it directly and indirectly infringed all of Masimo’s asserted claims, but argued the patents, covering the technology in Masimo’s pulse oximeters, were not valid. The jury, however, determined that Masimo’s patents were valid, finding they were not anticipated, indefinite, obvious, enabled or improperly written. It also found that Philips had not proven Masimo literally or indirectly infringed Philips’ own patent for measuring medical signals. When it comes to devising a strategy in the courtroom, Re said there are some basic tenets to adhere to, one of which is being as candid as possible. "I really try to be as open and candid as possible so that I maintain the highest standards of credibility,” Re said. “I never ever try to mislead, and this way things won’t turn on you.” Lawyers get into trouble, he added, when they try to get away with something because you never know when the judge or the jury or your opposing counsel will turn something on you if you don’t present things in the clearest and most open way. The cases are a lot of fun but a lot of preparation is required, Re said, noting that he enjoys the necessary teamwork. “Maybe it’s because I grew up with a large family, but I love working in large groups of people,” Re said. “I work with some great lawyers, and these cases require tremendous team effort.” As for explaining complicated technology to the jury — one of the major challenges of IP cases — Re says you must pique the jury’s interest by showing the benefit of the technology and then slowly peel back how you are able to get that benefit. There will come a point, he said, where it becomes too complicated or technical and you need to back off, which is why graphics, good witnesses and good teachers are key. “There are some really smart people who are just not good teachers. And you know who your good teachers were in school. Why are those teachers better than others? Usually they're more interesting,” Re said. “I was lucky that I grew up with a professor all my life. My father taught for 55 years in law school, so I lived with a professor, and he was a good teacher. I try to emulate some of the good teaching techniques he had."

Trying to be interesting and keeping it simple are also important, Re said, although he cautioned not to ever talk down to the jury. Knobbe Martens partner Stephen Jensen, who has known Re for 27 years and who pulled Re into the first case for Masimo, said that while the cases the two have worked on together run the gamut, most tend to be patent litigation cases where the stakes are very high. Because Re comes from a large family, he likes to be in the spotlight, Jensen said, noting that he has a big personality, which would be expected of someone who likes to stand in front of juries. Re’s courage is what has influenced him the most, he said. “He knows the law cold. He works as hard as I do. And he’s courageous,” Jensen said. “He’s principled. He will not make an argument that would ever cause anybody to question his credibility.” If you know the law and the facts of the case very well, and if you advocate a solid theory based upon those, then you can be courageous and bold, Jensen said, reflecting on what it’s like working alongside Re. “I think that a judge said to me once that ‘when [Re] tells me something, I can take it to the bank.’” --Additional reporting by Michael Lipkin. Editing by Sarah Golin and Kelly Duncan.

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