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    1. Home
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    Vincent C. Capati

    Associate


    • Los Angeles
    • Office213.629.6091
    • vcapati@nixonpeabody.com

    I'm a 2023 Nixon Peabody Pro Bono Champion.Read more about our Pro Bono program

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    Introduction

    Vince assists clients in a variety of intellectual property and corporate matters, with a special focus on intellectual property transactions, including technology transfer and licensing, research transactions and operations, and global IP portfolio management. Vince draws on his doctorate-level education and litigation experience to advise innovators and growth-driven companies in various industries, including life sciences, high tech, and fashion.

    Practice Areas

    Intellectual PropertyLife Sciences

    Industries

    Advertising, Promotions & Rights of Publicity

    My focus

    IP TRANSACTIONS & RESEARCH

    My practice is dedicated to helping both life sciences and high-tech clients create and implement IP strategies. I mainly focus on IP portfolio development and other corporate transactions, license agreements, and pre-litigation positioning. I also specialize in regulatory tech and life science research for academic institutions regarding technology transactions. Representative technologies in my practice include LEDs, software, telecom, GPS, semiconductors, computer chips, biotech, pharmaceutical, nutraceutical, and mechanical arts.

    EMERGING COMPANIES

    I help innovators and emerging companies grow their businesses by formulating strategies to protect and monetize their intellectual property as they bring their concepts to the marketplace. My work in this area includes IP licensing, IP enforcement, and other agreements.

    Looking ahead

    Innovation drives growth. Strategically developing and licensing IP grants innovators the leverage to disrupt the market and lead their industries.

    Insights

    • "Intellectual Property Enforcement before the International Trade Commission", Intellectual Property & Technology Law Journal, June 2022
    • “Pilot Program: Expediting Case-Dispositive Intellectual Property Issues at the International Trade Commission,” Intellectual Property & Technology Law Journal, May 2022
    • “Post-Expiration Patent Royalties: Developments Since Kimble and Practical Considerations,” Intellectual Property & Technology Law Journal, September 2021
    • “Reverse engineering of software: A safe harbor in Europe but not safe in the US: SAS Institute Incorporated v. World Programming Ltd.,” European Intellectual Property Review, Issue 41(5), 2019

    Representative experience

    • Provide pro-bono representation for the Dalai Lama Centre for Compassion (DLCC) in securing the rights to educational material
    • Support Generate Capital, a leading sustainable infrastructure platform, in closing an out-of-court rescue financing package for its borrower, Anuvia Plant Nutrients—a Florida-based producer of sustainable low-carbon fertilizer, assisting with new docs, diligence, and corporate actions
    • Represent CellOxess, LLC, a developer of diagnostics and prophylactic solutions that alleviate chronic, cellular oxidative stress, in strategic opportunities for patent licensing and enforcement relating to nutritional supplements with fertility indications
    • Represent Easton Diamond Sports, LLC, one of the most recognizable brands in baseball and softball equipment, in several matters involving its patents on composite baseball and softball bats
    • Represent The Regents of the University of California in a groundbreaking patent enforcement campaign concerning a revolutionary new generation of light bulb technology known as filament LED invented by a Nobel laureate-led team at UC Santa Barbara, including litigation before the U.S. International Trade Commission (ITC), the U.S. district courts for the Central District of California and Eastern District of New York, and the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (USPTO)
    • Represent an international computer chip manufacturer in a patent dispute before the U.S. District Court for the District of Delaware and PTAB
    • Represent an ag-biotech/agribusiness innovator in a multinational patent dispute, enforcing IP rights relating to genetically modified organisms in Australia, South America, Europe, and North America, including before the U.S. District Court for the Eastern District of Virginia*
    • Represent an international telecommunication software developer in an international bet-the-company patent dispute before the U.S. District Court for the Eastern District of Virginia*
    • Represent drug manufacturers in ANDA/ Hatch-Waxman litigations before the U.S. District Court for the districts of Delaware and New Jersey*
    • Represent a computer component manufacturer before the U.S. District Court for the Eastern District of New York*
    • Represent prominent political figures in commercial litigation before the U.S. District Court for the Central District of California*

    *Experience included prior to joining Nixon Peabody

    Admitted to practice

    California
    District of Columbia
    U.S. Court of Appeals, Federal Circuit
    U.S. District Court, Central District of California
    U.S. District Court, Eastern District of Texas

    Education

    University of California, Davis, B.S., Biological Sciences
    University of New Hampshire Franklin Pierce School of Law, J.D.
    University of Southern California, M.S.
    University of Southern California, Pharm.D.

    Professional activities

    • American Bar Association
    • American Intellectual Property Law Association

    In the News

    • Intellectual Property & Technology Law Journal

      Intellectual property enforcement before the International Trade Commission

      Washington, DC partner Evan Langdon, leader of NP’s International Trade Commission Section 337 team, Washington, DC associate Josh Rodriguez, and Los Angeles associate Vince Capati, all of the Intellectual Property group, contributed this article discussing the sharp increase in IP complaints and ancillary proceedings before the ITC, and why IP owners are filing suit there rather than in federal court.
      May 24, 2022
    • Intellectual Property & Technology Law Journal

      Pilot Program: Expediting case-dispositive intellectual property issues at the International Trade Commission

      This contributed article by Washington, DC partner Evan Langdon and associate Joshua Rodriguez, and Los Angeles associate Vincent Capati, all of the Intellectual Property group, covers the International Trade Commission’s new pilot program allowing administrative law judges to issue interim initial determinations on certain disputes, in an effort to resolve investigations more efficiently and cost-effectively.
      April 21, 2022
    • Intellectual Property & Technology Law Journal

      Post-expiration patent royalties-Developments since Kimble and practical considerations

      Los Angeles partner Seth Levy and associate Vince Capati, and Washington, DC associate Alexis Grilli, all of the Intellectual Property group, contributed this article analyzing royalties due after a patent’s expiration—considered unlawful per se, in a rule upheld by the Supreme Court in 2015—and what it means for patent owners and licensees.
      Aug 20, 2021
    • Bloomberg News

      'Edison' Bulb Battle Heats Up With University Targeting GE, Ikea

      An NP team led by Los Angeles Intellectual Property partners Seth Levy and Shawn Hansen on Monday expanded its groundbreaking patent enforcement campaign on behalf of the Regents of the University of California (UC). This article covers the new complaint, filed with the U.S. International Trade Commission, which seeks an investigation into the unauthorized importation and sale after importation of UC’s patented filament LED lighting technology by General Electric, Savant Systems, Feit Electric, Home Depot, Ikea, and Satco Products. In addition to Seth and Shawn, the NP team includes Washington, DC Intellectual Property partner Evan Langdon; Los Angeles Intellectual Property partners Staci Riordan, Vincent Yip and Peter Wied, and associate Vince Capati; Chicago Intellectual Property associates Paulina Starostka and Angelo Christopher; San Francisco Complex Commercial Disputes associate Tracy Ickes; and Los Angeles patent specialist Jason Moore.
      Aug 31, 2020
    • Law360

      UC System Asks ITC to Probe Home Depot, Others Over LEDs

      An NP team led by Los Angeles Intellectual Property partners Seth Levy and Shawn Hansen on Monday expanded its groundbreaking patent enforcement campaign on behalf of the Regents of the University of California (UC). The following articles cover the new complaint, filed with the U.S. International Trade Commission, which seeks an investigation into the unauthorized importation and sale after importation of UC’s patented filament LED lighting technology by General Electric, Savant Systems, Feit Electric, Home Depot, Ikea, and Satco Products.

      In addition to Seth and Shawn, the NP team includes Washington, DC Intellectual Property partner Evan Langdon; Los Angeles Intellectual Property partners Staci Riordan, Vincent Yip and Peter Wied, and associate Vince Capati; Chicago Intellectual Property associates Paulina Starostka and Angelo Christopher; San Francisco Complex Commercial Disputes associate Tracy Ickes; and Los Angeles patent specialist Jason Moore.

      Aug 31, 2020

    Insights And Happenings

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    • Alert

      Original? Nope. Ornamental? Yup. Protectable? 100%

      Feb 9, 2023
    • Article

      Competitors may (sometimes) legally use a brand’s trademarked puns, rhymes, and catch phrases

      Sep 28, 2022
    • Article

      TikTok's song library does not shelter brands and influencers from copyright infringement

      July 20, 2022
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      • Office:213.629.6161
      • slevy@nixonpeabody.com
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      • Office:312.425.8514
      • jgaretto@nixonpeabody.com
      Janet M. Garetto
    • Andrew Y. Choung

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      • Office:213.629.6166
      • achoung@nixonpeabody.com
      Andrew  Y. Choung
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