Jeff Joyner

Jeff Joyner is a partner in Glaser Weil’s Century City office. Jeff has successfully protected and litigated key intellectual property assets and closed multibillion-dollar transactions for cutting-edge climate and sustainable energy technologies. In addition, Jeff serves as a trusted advisor and counsel to Fortune 100 companies, entrepreneurs, investment funds and high-net-worth individuals on a variety of matters. His broad legal acumen allows him to address the universe of his clients’ legal and strategic business decisions for bet-the-company deals, mergers and alliances. 

Jeff’s practice focuses on environmental, social and governance (ESG) companies, including those in the climate tech, alternative energy, advanced transportation, and health and wellness industries. He also has experience in consumer products, entertainment and media, clothing and apparel, electronics, health and wellness and food and beverage.

Jeff is regularly sought after for:

• Intellectual property litigation, as lead trial counsel in disputes related to:
  • Patent, trademark, trade secret, trade dress and copyright infringement
  • Anti-counterfeiting
  • Reverse confusion and dilution
  • Unfair competition
  • Contractual, licensing, domain name and rights of publicity disputes
• Intellectual property counseling, acquisition, protection and enforcement
• Intellectual property licensing and technology transactions
• Management of significant sustainable infrastructure legal teams
• Lead counsel and advisor for complex corporate transactions and financings
• Leadership in sustainability and emerging clean technologies

Jeff’s recent notable experience includes his representation of:

• A super-grid company as lead counsel in a large-scale alternative energy telecommunications, infrastructure and manufacturing project to build the largest super grid in the world. The super grid will be capable of handling the rising demand for renewable energy, offering high-voltage power, ultra-high-speed Internet, sustainable clean water, wastewater, transportation and delivery services.
• Scepter, Inc., a company designing and launching a satellite constellation for measurement of greenhouse gases and criteria air pollutants. Work includes protecting, exploiting and enforcing the company’s intellectual property, in addition to drafting and negotiating deals and capital raises to support its growth.
• InCharge Energy, the leading developer of commercial EV charging systems, with respect to the clients’ IP protection, enforcement and licensing with a significant valuation for its hardware, software and service for electric vehicle fleet charging solutions for companies like UPS.

• A production company in a copyright dispute related to a high-profile film project for which the protection of the client’s IP is critical to its ability to move forward with a legally viable work.

Additional significant experience includes:

Patent Litigation

• Securing high damages awards through final judgments in pretrial and trial proceedings, exceeding $200 million.
• Obtaining summary judgment of invalidity of patent and noninfringement in numerous actions, including interactive website technology for consumer marketing; design patent for a game canister; HTML tags for photos, video and sound; and Ethernet technology, among others.
• Securing dismissals for Fortune 100 companies, avoiding costly discovery and trials regarding various technologies such as needleless valve technology for an international medical device company, a method for allegedly filtering SPAM, and collapsibility of plastic bottles, among others.
• Securing settlement and indemnity for a Fortune 50 company in a patent action brought regarding alleged flame-retardant pallet technology.
• Successfully defending a motion to stay upon re-exam, immediately enforced by way of executing on bank accounts, and recovered for the client the $5 million monetary judgment.

Trademark Litigation

• Obtaining attorneys’ fees and trademark damages at trial of more than $120 million based on the defendants’ sales in the amount of only $36 million, by proving willful infringement.
• Obtaining trebled damages and punitive damages in the amount of $5 million based on separate deceptive trade practices and unfair competition claims.

Trade Dress Disputes

• Representing a large restaurant chain in a dispute over former managers launching a competing chain with the same look and feel as the client’s restaurants.
• Representing an Italian haute couture company in a dispute over competing retail stores using the client’s trade dress.

Trade Secret Disputes

• Representing a large electric car company with respect to investigations and litigation over a former CFO leaving to launch a competing car company.
• Representing an international surfing, skateboarding and snowboarding apparel company in relation to the CEO leaving to start a competing company.

Intellectual Property Enforcement

• Obtaining more than 100 seizure orders from federal courts and significant damages as a result of the U.S. Marshals Service and local law enforcement officers seizing thousands of pieces of infringing product and millions of pages of electronic and physical documents, including at the Consumer Electronics Show and warehouses throughout the U.S.
• Obtaining exclusion orders and orders for border seizures throughout the United States as well as abroad.

Licensing

• Advising companies and inventors, among others, on the development, clearance, acquisition, protection, licensing and enforcement of their technologies.
• Designing, maintaining or advising with respect to international licensing programs that include more than 500 licensees.

Branding

• Advising celebrities regarding the development of brands and clothing lines launched in high-end department stores.
• Developing logo enforcement program for patented products of an international company so they could pursue stronger remedies to deter infringers.         

Business Litigation

• Obtaining a $9.5 million award in arbitration and 10 lawsuits related to the installation of 10 solar farms by a solar company client.
• Handling sophisticated collection actions for a Fortune 150 company, recovering damages exceeding $150 million through asset freezes, repatriation orders related to assets transferred out of the U.S., incarceration of defendant CEO for contempt, impounding inventory and assignment of defendants’ accounts receivable.
• Representing an international media streaming company over breakup fee in a $2 billion merger deal with a large electronics company.

IT & Standards

• Drafting and negotiating master services agreements (MSAs), software as a service (SaaS) agreements, privacy policies, and terms and conditions, among other documents related to intellectual property, standards and risk management.
• Designing framework for international standards in relation to electric vehicle charging infrastructure.

Entertainment, Sports and Media

• Developing production agreements with respect to various subjects, including Atari’s first video game of a feature film, the Stanley Cup, Mother Teresa and spoken word group The Last Poets, among others.
• Conducting copyright audit of hundreds of copyrights and prepared sophisticated analysis for the estates of music icons to assist in the exploitation of the copyrights with combined value in the millions of dollars.

Private Equity, Venture Capital and Emerging Technologies

• Drafting and negotiating technology transfer agreements for companies, universities, incubators and labs.
• Serving as active limited partner and advisor with respect to fund formation, seed capital, convertible notes, series paperwork and exits.
• Advising regarding opportunities, regulations and legislation for private-public funding.

International Trade

• Drafting and negotiating manufacturing, distribution, co-packing and joint venture agreements, and licensing programs for companies in various industries, including advanced transportation, LED lighting, and consumer products such as TVs, optical media and optical hardware.

Government Law and Policy

• Advocating for positions on legislative and regulatory issues, state and federal law regarding funding sources, demonstration or pilot projects, government contracts, and private-public partnerships.   
• Advising companies and nonprofits on fundraising, stakeholder collaborations, advocacy, government relations, consumer outreach, economic development, industry cluster development, technology transfer and workforce development, among other matters.  
• Testifying before a California Senate Select Committee related to the above issues on an annual basis.

Results

News

Speaking Engagements

• Panelist, “Intellectual Property and Rights,” Future Worlds 2022 Metaverse Conference, November 12, 2022
• Panelist, “Mobility,” Bioscience LA, October 6, 2022
• Co-Convener, “Charrette: To See The Future Of Cities, Pay Attention To The Curb, Imagining Street, Curb, and Building-Interfacing Infrastructure Through a Planning Lens,” VerdeXchange, January 1, 2019
• Moderator, “Electric Scooters, Sidewalks, and First/Last Mile (B3),” VerdeXchange, Jan 1, 2019
• Moderator, “The Best Defense Can Be A Great Offense and Save the Expense of Trial,” Patent Disputes Forum North presented by Daily Journal, Apr 18, 2017
• Panelist, “An Update on Urban Mobility: ATNs Coming of Age Around the World,” VerdeXchange, Jan 1, 2016
• Panelist, “NextGen Passenger Cars: Will They Be Zero-Emitting, Connected, and Eventually Autonomous?,” VerdeXchange, Jan 1, 2016
• Co-Chair and Moderator, “Government Law & Policy, Politics and Intellectual Property for Advanced Transportation and Infrastructure,” LAEDC e4Mobility Alliance, Century City, CA, July 9, 2015
• Co-Chair and Moderator, “Patent Disputes Forum for Corporate Counsel; Avoiding and Resolving Patent Disputes: Structuring a Game Plan for Licensing, Legislation, Business Partnerships, and More,” Third Annual Patent Disputes for Corporate Counsel Forum, Orange County, CA, May 20, 2015
• Panelist, “Protecting Emerging Technologies and Start-ups with Intellectual Property,” Angel Capital Association Summit, San Diego, CA, April 14, 2015
• Co-Chair and Moderator, “Roundtable Discussion on Autonomous Vehicles,” LAEDC e4Mobility Alliance, Century City, CA, March 12, 2015
• Co-Chair, “eCarFest: Glendale Cruise Night – Tesla, Nissan, BMW, Mercedes, Chargepoint, and AQMD,” Glendale, CA, 2014/2015
• Co-Chair, “Patent Disputes Forum,” Silicon Valley, CA, Daily Journal & West LegalEdcenter, December 4, 2014
• Co-Chair and Moderator, “Connecting the Dots in Advanced Transportation: Zero Emission Bus Manufacturers,” LAEDC e4Mobility Alliance, Century City, CA, June 12, 2014
• Co-Chair and Moderator, “Best Practices for Avoiding and Resolving Patent Disputes: Licensing, Legislation, and Business Partnerships,” Patent Disputes Forum, Daily Journal and West LegalEdcenter, Costa Mesa, CA, May 6, 2014
• Co-Chair, “Patent Disputes Forum,” Daily Journal & West LegalEdcenter, Silicon Valley, CA, 2013
• Speaker, “Patent Prosecution in a Post-AIA World,” US Patent and Trademark Office and National Institute of Science and Technology, Patents Webinar Series, November 20, 2013
• Co-Chair & Moderator, “Patent Disputes 2013: How the AIA, USPTO and Patent Aggregation Have Changed the Landscape,” Thomson Reuters, Silicon Valley, CA, November 5, 2013
• Speaker, “The New Frontier: Next-gen Product Development (Advanced Transportation),” 2nd Annual Cleantech Revolution, Los Angeles, CA, November 28, 2012
• Co-Chair and Moderator, “Patent Disputes and Best Practices for Litigating and Managing Disputes under AIA, Patent Disputes: Uncover the Changing Patent Landscape from Patent Portfolio to Litigation -Transitioning in a Post AIA World,” Thomson Reuters & West LegalEdcenter, Silicon Valley, CA, November 14, 2012
• Local Outreach Committee Member, 26th Electric Vehicle Symposium (EVS26), Los Angeles Convention Center, Los Angeles, CA, May 6-9, 2012
• Moderator, “Next Generation Transportation Fuels and Technologies,” VerdeXChange Conference, Los Angeles, CA, January 23, 2012
• Speaker, “Increasing Your IP Value: Build, Manage and Defend - Best Practices for Post Grant Patent Review Under the America Invents Act,” Counsel-to-Counsel Forum, LexisNexis Martindale-Hubbell, Los Angeles, CA, 2011
• Moderator, “Patent Reform 2011: The America Invents Act,” Thomson Reuters & Daily Journal, Silicon Valley, CA, 2011
• Co-Chair, “eCarFests: Bringing the Electric Car Experience to You,” Nissan, Coda, Tesla, Aeroenvironment, Ecotality, 350 Green, LA Department of Water and Power, Glendale Water and Power and LAEDC, Glendale and Venice, CA, 2011
• Co-Chair, “Patent Disputes: New Models for a New Market,” Thomson Reuters & Daily Journal, Silicon Valley, CA, 2011
• Moderator, ”Electric Vehicles on the Grid: Energizing EVs,” Cleantech Forum, San Francisco, CA, March 2011
• Moderator, “Successfully Managing Costs in Patent Litigation,” Thomson Reuters & Daily Journal, Silicon Valley, CA, 2010
• Moderator, “CEO Case Studies - Green Transportation,” Cleantech Forum New York, New York, NY, 2010
• Co-Chair, “Patent Disputes: Bridging the Gap Between In-House Counsel and Law firms,” Thomson Reuters, Silicon Valley, CA, 2010
• Co-host, “Texas General Counsel Forum Institute for Leadership in the Law,” Dallas, TX, 2010
• Moderator, “Successfully Managing Costs In Patent Litigation,” Thomson Reuters, Silicon Valley, CA, 2010
• Moderator, “Clean Tech, Alternative Energy and Climate Change After the Stimulus,” Silicon Valley, CA, 2009
• Moderator, “Current Ethics Issues in Patent Litigation,” USC Intellectual Property Institute, Los Angeles, CA, 2009

Hot Topics

Thought Leadership

• Co-Author, "Anti-counterfeiting 2016 – A Global Guide (USA Chapter)," World Trademark Review, Winter 2016
• "Understanding Options in the New Patent Landscape," Counsel-to-Counsel Forum Press, Lexis-Nexis, Volume 1, Issue 10, January 6, 2012
• "Future Technology Clauses: Would Their Lack of Compensation Have Discouraged Shakespeare's Creativity and Denied Society's Access to His Works in New Media?," 31 S.U.L. Rev. 575, 2002
• "Laws Against IP Piracy May Stop Some Purveyors of Porn," The National Law Journal, March 25, 1996
• "Counterfeiting Reaches New Levels: Organized Crime," The National Law Journal, May 8, 1995

Awards and Recognition

WTR 1000, Enforcement and Litigation, California, World Trademark Review, 2019 – 2021

Top Intellectual Property Lawyers, Daily Journal, 2021

Southern California, Super Lawyers, 2012 – 2013, 2017 – 2019

The World’s Leading Patent Professionals, Litigation, IAM Patent 1000, 2015 – 2018

WTR 1000, Prosecution and Strategy, California, World Trademark Review, 2015 –2017

75 Top IP Litigators in California, Daily Journal, 2010

Member, Meritas Energy Group Steering Committee

Member, Board of Advisors, Resilience Fund

Board member, U.S.-China CleanTech Center

Member, Advisory Board, e4 Advanced Transportation Centers

Co-chair and Co-founder, e4 Mobility Alliance, Los Angeles County Economic Development Corporation (LAEDC)

Chair, e4 Autonomous Vehicle Branding Task Force, LAEDC

Member, Green Economy Committee, LAEDC

Member, Leadership Council, Los Angeles CleanTech Incubator

Board member, CleanTech Los Angeles

Active limited partner, Clean Pacific Ventures

Board member, Seven Arrows School

Board member, Westside Music Foundation

Member, International Trademark Association (INTA)

Committee member, INTA Harmonization of Trademark Law and Practice

Committee member, INTA International Classification

Member, American Intellectual Property Law Association

Member, Association of Business Trial Lawyers Los Angeles

Member, International AntiCounterfeiting Coalition

Co-chair, Patent Disputes Forum North, 2010 – 2017