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Josh Pond

Partner

Washington, D.C.

Josh Pond guides clients through their biggest IP challenges and opportunities, particularly as to alleged IP-infringing and unfair U.S. imports.

Josh is a Global and U.S. Chambers-ranked Section 337 advocate before the U.S. International Trade Commission. He is also a D.C. Super Lawyer in IP litigation, and Patexia has consistently ranked him as a “most-active” and "best performing" ITC practitioner for each of the past five years.

Josh’s practice centers on blocking and defending imports before the ITC. He regularly serves as lead ITC counsel for domestic and international companies – particularly those from Asia and Europe – in Section 337 investigations. Over the past decade, Josh has been to ITC trial for over a dozen Fortune Global 500 companies. He focuses on matters involving brand protection, patent, trademark, and copyright infringement, international trade secret theft and unfair competition claims.

In addition to the ITC, Josh is active before the U.S. Patent and Trademark Office, U.S. District Courts and the Federal Circuit. Recent patent-validity challenge highlights at the USPTO’s Patent Trial and Appeal Board include a complete five-patent Inter Partes Review defense victory, as well as a two-patent invalidating IPR win, affirmed at the Federal Circuit, as well as a key patent defense through Ex Parte Reexamination. Josh’s most recent District Court win was a jury verdict in favor of his client ScentAir in Delaware. Abroad, China has featured prominently among recent global forums for Josh’s matters, as well as Canada and Germany.

Josh’s IP portfolio strategies are catered to meeting enforcement challenges. His clients include companies ranging from startups to multinationals in electronics, consumer products, telecommunications, mechanical and medical devices, and biochemicals.

A founding member of the Advisory Council to Georgetown's Institute for Technology Law & Policy, Josh also has been a fellow in the Hispanic National Bar Association’s IP Law Institute. He was a founding editor of the ITC Trial Lawyers Association’s 337 Reporter Round-Up.

Josh served in the U.S. Marine Corps as a field artillery captain. He was deployed to the Persian Gulf and awarded the Defense Meritorious Service Medal. As part of his pro bono service, Josh advocates for fellow veterans with the “Lawyers Serving Warriors” team of the National Veterans Legal Services Program.

Prior to joining Orrick, Josh co-led a global law firm’s ITC Section 337 litigation practice.

"He is an excellent communicator and a great litigator. His professional and disarming demeanor stands out and he really uses it to his clients' benefits." -Chambers Global, International Trade: Intellectual Property (Section 337) client

    • Secured early defensive victory for Etron Technology Inc. of Taiwan before the U.S. International Trade Commission, with judgement that the patent infringement complaint lodged against Etron’s semiconductor chip imports did not warrant institution of the Section 337 investigation sought. Orrick’s team advocated early and compellingly to the Commission that the complaint did not sufficiently allege importation, domestic industry, infringement, or otherwise—causing complainant to amend. We again illuminated deficiencies as to the amended complaint to the Commission, leading it to deny institution—an extremely rare, decisive, efficient win for our client before the ITC.
    • Won jury verdict for commercial scent provider ScentAir Technologies against competitor in Delaware in four-patent infringement case related to next generation scent diffusion products (Case No. 20-984-RGA) before Federal Circuit Judge Richard G. Andrews. Secured institution of Inter Partes Review challenges to the validity of asserted patent claims before the USPTO’s Patent Trial and Appeal Board (IPR Nos. 2021-00012 and -00014).
    • Representing ScentAir asserting patent infringement claims against competitor in Delaware, with trial anticipated in late 2024, now that the U.S. PTO has confirmed validity of asserted claims after win against competitor’s Ex Parte Reexamination.
    • Represented Graco Children’s Products and its supplier, Wonderland Nurserygoods of Taiwan, in a multi-forum patent litigation against Baby Trend and three of its suppliers in China. Brought ITC action against Baby Trend’s U.S. imports of strollers and playards infringing four patents to Graco’s famous Pack ’n Play playards and Sit ‘n Stand strollers, with parallel actions in the Central District of California. Won initial determination of Seciton 337 violation after five day trial before Administrative Law Judge Bryan Moore. (Certain Playards & Strollers)
    • Represented iconic outdoor equipment brand Hydroflask in a trademark and design patent ITC investigation related to water bottle knockoff imports. In less than six months, won an early consent order against an international fashion brand and reached an early settlement with an online marketplace respondent and a stay of the investigation pending settlement with a manufacturer. Default judgements were issued against the remaining respondents, and general exclusion order was awarded against infringing imports from any source. (Certain Vacuum Insulated Flasks)
    • Won long-due disability benefits for decorated veteran Sergeant Benjamin Hayhurst in a suit against the U.S. Army before D.C. District Court.
    • Represented Chinese manufacturer and popular U.S. retailer in a patent infringement ITC investigation related to pick-up truck folding bed covers. Beat the complainant on three key procedural motions for respondent clients, resulting in withdrawal of the complaint and termination, a complete defense win. (Certain Pick-Up Truck Folding Bed Covers)
    • Won jury verdict for commercial scent provider ScentAir Technologies against competitor in Delaware in four-patent infringement case related to next generation scent diffusion products (Case No. 20-984-RGA) before Federal Circuit Judge Richard G. Andrews. Secured institution of Inter Partes Review challenges to the validity of asserted patent claims before the USPTO’s Patent Trial and Appeal Board (IPR Nos. 2021-00012 and -00014).
    • Represented Lowe’s and Husqvarna  in a patent infringement and importation ITC investigation as to hand-held tool carburetors involving 26 downstream equipment- and retailer-customers. Won termination early on by consent order for Husqvarna and on the eve-of-trial for Lowe’s by summary determination by Chief Judge Bullock (and affirmed by the Commission) that the company had failed to establish domestic industry. (Certain Carburetors)
    • Defended a semiconductor powerhouse Broadcom and its seven downstream customers in patent infringement and importation ITC investigation related to semiconductor chip packaging technology. Prevailed in two of three asserted patents at trial before Administrative Law Judge Sandra Dee Lord and convinced the Commission to review findings on the third patent (Certain Semiconductor Devices). Counter-asserted patented streaming audio multimedia technology in related ITC investigation seeking to prevent the importation of wireless speakers and other audio systems. (Certain Wireless Audio Systems)
    • Obtained complete victory for Reebok in a patent infringement and importation ITC investigation related to athletic shoe sole functionality after all respondents agreed to cease importation of the accused products (Certain Athletic Footwear). Pursued damages in Oregon district court until a favorable settlement was reached.
    • Globally enforced medical device patents of preeminent surgeon against infringing surgical instruments of competitors, including suit before the Southern District of New York (Case No. 18-CV-1964), with related actions in Ottawa, Canada and Düsseldorf, Germany resulting in favorable settlement, with a second separate license agreement in Asunción, Paraguay.
    • Defended a global electronics manufacturer Arris in patent infringement and importation ITC investigation concerning on-screen programing guide technology; completed five-day trial before Administrative Law Judge David P. Shaw to win final determination of no violation, affirmed by the full Commission. Advocacy continued before U.S. Customs and Border Protection and the Federal Circuit as to implications of the no-violation ruling. (Certain Digital Video Receivers)
    • Defended ScentAir in Wisconsin patent infringement case related to commercial scent diffusion products (Case No. 12-CV-483-RTR). Successfully petitioned for inter partes review of both patents-in-suit, resulting in stay of litigation. The USPTO's Patent Trial and Appeal Board ruling found all issued claims unpatentable – subsequently affirmed at the Federal Circuit (IPR Nos. 2013-00179 and -00180; Appeal Nos. 2015-1017 and 2015-1020). Back in Wisconsin, won summary judgement and an award of costs and fees.
    • Developed intellectual property portfolio and strategy for startup in the business-to-business cloud payment space, supporting explosive growth to a $300-million market valuation with more than 150 employees in the U.S. and Europe, and recent expansions to China and Japan.
    • Prevailed on behalf of company, securing denial of post-grant review institution as to certain patent claims to tactical signaling devices. The Patent Trial and Appeal Board concurred with our client’s Preliminary Response, finding failure to demonstrate obviousness of the non-instituted claims with its Petition; the Board further denied their request for rehearing on the issue (PGR2015-00022).
    • Counseled plaintiff-patentee in complex Markman hearing and jury trial in Oregon related to high stability canola oil, resulting in determination of patent infringement, validity, and damages after ten-day trial before Judge Michael W. Mosman.

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