Joseph Paunovich is a partner based in the firm’s Los Angeles office. His practice area spans a wide variety of complex and high stakes domestic and international civil and regulatory matters in both state and federal courts, ranging from intellectual property litigation, licensing, and strategy to governance, antitrust, environmental and other complex business disputes and arbitrations. He is also a registered patent attorney and provides client counseling on strategic prosecution, post-grant and reexam proceedings and product design in connection with litigation.
Mr. Paunovich is sought after for his expertise, judgment and tenacity, as well as trial experience. Whether going toe-to-toe with award-winning chemists or CEOs, he has complete command of his cases, the trust of his clients and makes complex topics simple for a judge and jury. He has experience working with Fortune and early stage companies, as well as individuals, with a particular emphasis on life sciences and consumer products companies in established and emerging fields including, for example, Pfizer, MannKind, Brink Biologics, NantKwest, Olaplex, Neurovision Medical Products, OCO Biomedical, Peel Technologies, Wolverine World Wide, IBM, IQAir, Uber, Ansun Biopharma, Moldex-Metric, and Pokerstars. He has worked on matters involving a wide variety of complex technologies, including for example cyclooxygenase selective inhibitors, viral vaccines and delivery systems, recombinant DNA, respirator and hearing safety equipment, computer operating systems, cell phone applications and user interfaces, data compression methods, digital rights management and copy protection, network-attached storage devices and blade servers, network distributed learning environments, printer ink cartridges, and diamond-like carbon films, remote control and IR technology, passenger notification systems, wake surf technology, chemical hair care service additives, and automobile financing and credit systems.
Mr. Paunovich has litigated and tried numerous cases to jury verdict and obtained other pretrial victories and positive resolutions for his clients throughout the world. On the plaintiff’s side, he has obtained, among significant victories, two Top 100 verdicts in the U.S. In 2019, Mr. Paunovich first chaired a trial as lead counsel for Olaplex LLC in the District of Delaware against L’Oréal, the largest beauty company in the world. In a landslide win, the jury returned a unanimous verdict and awarded more than $93 million in damages finding that L’Oréal had willfully stolen Olaplex’s trade secrets, willfully infringed upon two Olaplex patents, and breached the parties’ NDA. L’Oréal’s claims of patent invalidity were rejected in total, and the court doubled the non-overlapping portion of the award and granted attorneys’ fees and costs, finding that Olaplex was entitled to enhanced damages based on willful trade secret theft and patent infringement. The court also granted a permanent injunction barring L’Oréal from selling the infringing products and restored Olaplex to its position as the sole provider of the revolutionary hair care products it invented. In 2012, Joe co-first chaired a trial as counsel for Shelbyzyme LLC in the District of Delaware against Genzyme Corporation in a patent infringement dispute involving recombinant DNA technology for the treatment of Fabry disease. The jury returned a unanimous verdict and awarded $50 million and a 6% royalty in damages finding that Genzyme infringed upon two of Shelbyzyme’s patents and rejecting Genzyme’s patent invalidity claims.
On the defendant’s side, Mr. Paunovich has completely defensed a variety of allegations and claims against his clients throughout his career. For example, on behalf of Olaplex, Mr. Paunovich obtained a complete dismissal of each of L’Oréal’s counterclaims seeking $47 million against Olaplex alleging violations of the Lanham Act for false and misleading advertising, fraud, false patent marking, and breach of contract. On behalf of Moldex-Metric, he obtained a complete dismissal of 3M’s claims of patent infringement and brought a follow on suit for malicious prosecution against 3M in connection with that suit that ended favorably for Moldex. On behalf of Peel Technologies, Mr. Paunovich obtained a complete walk-away from a nine-patent infringement lawsuit and invalidated two international patents in actions brought by HomeTouch in Taiwan and Mainland China.
In addition, Mr. Paunovich has tried numerous criminal jury trials in state courts as part of the Trial Advocacy Project (TAP) program as a Deputy City Attorney in Los Angeles.
Mr. Paunovich has been repeatedly recognized as one of the top trial lawyers and litigators in California and the United States. Managing Intellectual Property named Mr. Paunovich an “IP Star” in 2014, Law360 named him a “Rising Star” in 2016 and he has consistently been recognized as one of California’s Super Lawyers (2014-2017). Mr. Paunovich has received several other academic and professional recognitions.
Mr. Paunovich also serves as an adjunct professor at the University of California Irvine Law School, teaching patent litigation, and has for several years sat on the charitable board of the Los Angeles Legal Aid Foundation.
Mr. Paunovich was a member of the University of Michigan Inteflex Program (a combined B.S./M.D. program) where he received a Bachelor of Science degree in Microbiology and graduated from the University of Michigan Law School.
- Brink Biologics
- Neurovision Medical Products
- OCO Biomedical
- Olaplex LLC
- Liqwd, Inc.
- TokBox Inc.
- Nautique Boats, Inc.
- Peel Technologies
- Uber Technologies, Inc.
- NexBio (now Ansun Biopharma)
- GO Financial
- Buffalo Inc.
- Moldex-Metric, Inc.
- Shelbyzyme LLC
- Rovi Corporation
- Bruce Technology LLC
- Teledyne Corporation
- Brand Technologies, Inc.
- Represented Olaplex and Liqwd in the District of Delaware in a patent infringement, trade secret theft and breach of contract dispute involving chemical hair treatment additives. Obtained a $93 million dollar verdict after a six-day jury trial, and enhanced damages and attorneys’ fees and costs.
- Represented Peel Technologies in the Central District of California in a patent infringement dispute involving remote control and IR technologies. Obtained a complete walk-away months after filing.
- Represented Uber Technologies in the Central District of California in a patent infringement dispute involving passenger notification systems. The matter resulted in a favorable settlement before trial.
- Represented NexBio (now Ansun Biopharma) in the California Superior Court San Diego in a breach of fiduciary duty and trade secret misappropriation dispute involving a treatment for flu. The matter resulted in a favorable settlement before trial.
- Represented Shelbyzyme in the District of Delaware in a patent infringement dispute involving recombinant DNA technology for the treatment of Fabry disease. Obtained a $50 million dollar verdict plus a 6% royalty after a six-day jury trial.
- Represented Moldex in the Central District of California in a trademark infringement dispute involving color marks and trade dress used with disposable and reusable hearing protection products. Obtained a consent judgment and injunction against further use after prevailing twice in the Ninth Circuit.
- Represented DriveTime and GO Financial in the Central District of California and District of Arizona in a patent infringement dispute involving automobile financing and credit systems. The matter resulted in a favorable settlement before trial.
- Represented Rovi Corporation in the Northern District of California in a patent infringement dispute involving analog copy protection technology. The matter resulted in a favorable settlement before trial.
- Represented Moldex in the District of Minnesota in a patent infringement dispute involving adjustable sound attenuating reusable hearing protection products. Obtained a complete walk-away by way of a covenant-not-to-sue granted by 3M and a favorable settlement before trial after a follow on suit for malicious prosecution.
- Represented IBM in the Eastern District of Texas in a patent infringement dispute involving blade servers. The matter was settled favorably after a five-day jury trial.
- Represented TokBox in the Central District of California in a patent infringement dispute involving distributed learning environments and video chat. The matter was dismissed in its entirety against TokBox before trial.
- Represented Seiko-Epson in the International Trade Commission and District of Oregon in patent infringement disputes involving printer ink cartridges. Obtained a complete exclusion order in the ITC and the district court matter was settled favorably before trial.
- Represented Moldex in the Central District of California in a patent infringement dispute involving a pleated filter element for use in reusable respirator masks. The matter was settled favorably less than 4 months after filing suit.
- Represented Bruce Technology in the Central District of California in a patent infringement dispute involving 22 patents relating to methods for manufacturing Liquid Crystal Display ("LCD") glass. The matter was settled favorably less than 6 months after filing suit.
- Represented IBM in the Southern District of California in a patent infringement dispute involving network attached storage devices, routers, switches and blade servers. The matter resulted in a favorable settlement before trial.
- Represented Moldex in the District of Minnesota in a patent infringement dispute involving one-way exhalation valves for use with disposable respirator masks. The matter resulted in a favorable settlement 3 months before trial.
- Represented IBM in the Northern District of California in a copyright and contract licensing dispute involving alleged overuse of copyrighted software. The matter resulted in a favorable settlement before trial.
- Represented Teledyne Corporation in the Central District of California in a patent infringement dispute involving 802.11 standards and transmission of flight black-box data. The matter resulted in a favorable settlement before trial.
- Intellectual Property Litigation
- Life Sciences Litigation
- Life Science: Pharmaceutical Patent Litigation
- Litigation Representing Plaintiffs
- Trade Secret Litigation
- Trademark, Trade Dress, Unfair Competition/False Advertising, and Publicity Rights Litigation
- Patent Litigation
- Post-Grant Practice
- Product Liability & Mass Torts Litigation
- Environmental Litigation
- Government Contracts Litigation
- International Trade Commission Proceedings
- University of Michigan Law School
- Michigan Telecommunications & Technology Law Review:
- Articles Editor
- Associate Editor
- Michigan Telecommunications & Technology Law Review:
- University of Michigan
(B.S., Microbiology, 2000)
- Integrated B.S./M.D. (Inteflex)
- The State Bar of California
- The State Bar of New York
- The State Bar of Illinois
- The State Bar of Michigan
- Registered to Practice Before the United States Patent and Trademark Office
- United States District Court:
- Northern District of California
- Central District of California
- Southern District of California
- Eastern District of Texas
- Eastern District of Michigan
- Western District of Michigan
- District of Delaware
- United States Court of Appeals:
- Ninth Circuit Court of Appeals
- Federal Circuit Court of Appeals
Law360 Rising Star: Intellectual Property (2016)
Super Lawyers Southern California (2014-2017)
Managing Intellectual Property IP Stars (2014)
Super Lawyers Southern California Rising Star (2013)
- "Intellectual Property Protection at Trade Shows, Conferences and Symposia," Client Advisory Bulletin, February 2006.
- Los Angeles County Bar Association:
- Trial Advocacy Project (TAP), Deputy City Attorney for Los Angeles and Anaheim
- Entertainment Law and Intellectual Property Section, Executive Board
- Los Angeles Legal Aid Foundation:
- Board of Directors
- Board of Directors
- University of California Irvine Law School:
- Professor, Patent Litigation