Samuel W. Apicelli

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Samuel W. Apicelli is co-chair of Duane Morris' Patent Preparation and Prosecution division. He concentrates his practice in all aspects of patent, trademark and copyright procurement and enforcement.

Mr. Apicelli provides strategic guidance to executive management on the development and commercialization of products and services and the implementation of patent strategies. On many occasions, those strategies require enforcement by court action. He assists investors in negotiations and transactions involving intellectual property, including due diligence reviews of patents and trademarks, and assists parties in mergers and acquisitions involving intellectual property of all types. He regularly performs intellectual property audits to identify or locate intellectual property assets, including patents or patentable subject matter, copyrights, trademarks, domain names and trade secrets. Mr. Apicelli is often called upon to assist in the development and sale of intellectual property rights and licensing and financing for technology for a wide variety of companies. He also prepares intellectual property opinions of counsel, responds to patent demand letters and regularly assists in the settlement of adverse claims.

In enforcement and trial matters, Mr. Apicelli often assumes a second chair position in charge of marshaling the technical and patent law aspects of a case, including interface with experts, substantive discovery oversight and active participation in the development of strategies for the case at hand. Sam's familiarity with the underlying technology, the patents at issue, the prior art and patent litigation strategies allows for both efficient support of lead trial counsels efforts in the court room, and cost effective implementation and management of associate lawyers and paralegal staff.

Mr. Apicelli's engineering, patent preparation and prosecution, and litigation experience includes: electrical/electronic engineering related to interconnection technology; the mechanical design of electronic systems; high speed metal stamping tools and systems; polymer molding tools and systems; high speed parts assembly machines and systems; fabric and garment fabrication methods and machines; and semiconductor device packaging and interconnection. Mr. Apicelli has written and prosecuted well over 350 patents in a variety of technical disciplines related to mechanical and electrical engineering and has been awarded three patents for his own inventions.

With respect to his trademark experience, Mr. Apicelli has prepared, filed or prosecuted over 650 trademark applications before the U.S. Patent and Trademark Office and foreign trademark offices. He provides a comprehensive service on an international basis in the areas of trademarks, unfair competition, false advertising and the Internet. Mr. Apicelli's foreign trademark practice regularly includes the creation, maintenance, and exploitation of trademarks in Europe via the European Community Trademark Office and in individual country trademark offices. Mr. Apicelli also regularly provides due diligence audits related to trademark and other IP assets in the U.S. and abroad as required for sale, acquisition and securitization of those assets. His international work experience allows him to provide unique practical advice and counsel to companies in selecting, clearing and protecting trade dress, trademarks and domain names on a global basis. Mr. Apicelli has represented many clients in all aspects of the enforcement of their intellectual property rights in U.S. federal courts and administrative agencies, such as the USPTO, as well as before administrative agencies such as the European Community Trademark Office and individual country trademark offices, with the assistance of qualified foreign counsel.

Prior to practicing law, Mr. Apicelli worked for 12 years for AMP Inc., where he was a mechanical/electrical product development engineer, an international product and development engineering manager and later Director of Engineering for Southern Europe, Latin America and Asia Pacific operations. As Director of Engineering, Mr. Apicelli was based in London where he administered and had profit and loss responsibility for numerous product and manufacturing development programs. He acted as an advisor to the international management teams for the preparation of their yearly business plans. He also was a member of the corporation's Intellectual Property Management committee. One of Mr. Apicelli's duties in Europe and Asia was to work with the AMP's tax advisors to negotiate transfer pricing, royalties, and tax holidays with foreign tax authorities that were based upon or supported by technology transfer to those countries, as substantiated by AMP's foreign patent and trademark portfolio.

Pro Bono

Mr. Apicelli regularly represents veterans in appeals before the U.S. Court of Appeals for Veterans Claims in association with the Veterans Consortium Pro Bono Program. The Veterans Consortium provides veterans and other VA claimants, who have been denied by the VA's Board of Veterans' Appeals, with free attorney representation in their appeal before the U.S. Court of Appeals for Veterans Claims.

Representative Matters

  • Represented H.C. Wainwright & Co. LLC, acting as sales agent, in a $12.5 million at-the-market (ATM) equity offering of common stock for Aethlon Medical, Inc. (NASDAQ: AEMD).
  • Represented FBR Capital Markets & Co., acting as sales agent, in a $4 million at-the-market (ATM) equity offering of common stock for Cyclacel Pharmaceuticals, Inc. (NASDAQ: CYCC).
  • Represented a specialty chemical company in closing a $175 million credit facility, comprised of revolving credit, term loan, swing line and letters of credit sub-facilities. The credit agreement contains an accordion feature affording the client the right to increase the revolving credit facility size by $50 million.
  • Biomedical Enterprises, Inc. v. Solana (W.D. Tex) Filed 1/30/14, Representing Wright Medical in litigation alleging infringement of a patent pertaining to joint compression staples.
  • Secure Axcess, LLC v. U.S. Bank National Association et al (E.D. Tex) Filed 9/27/13, Represented ING Bank in litigation alleging infringement of a patent pertaining to internet security.
  • Secure Axcess, LLC v. Ocwen Financial Corporation (E.D. Tex) Filed 10/16/13, Represented Ocwen in litigation alleging infringement of a patent pertaining to internet security.
  • David Wawrzynski v. H.J. Heinz Co., et al. (3rd Circuit) Filed 10/17/13 and 7/21/14, appeal in case in which plaintiff claimed Heinz used his ideas in Heinz's Dip and Squeeze ketchup package.
  • Howmedica Osteonics Corp. v. Zimmer, Inc. (U.S. Court of Appeals — Federal Circuit) Filed 1/7/15 Appeal from successful Markman hearing.
  • Peroxychem LLC v. Innovative Environmental Technologies, Inc., et al., Civil Action No.: 14-cv-6446 and Innovative Environmental Technologies, Inc., v. Peroxychem LLC, et al., Civil Action No. 15-cv-3145, Representing PeroxyChem LLC in litigation alleging infringement of patent pertaining to environmental remediation.
  • Represented NYX Gaming Group in a $105 million financing and acquisition of Amaya (Alberta) Inc. (f/k/a Chartwell Technology Inc.) and Cryptologic Limited. NYX Gaming Group has also entered into a preferred supplier licensing agreement with a subsidiary of Amaya Inc.
  • Orthophoenix, LLC v. Wright Medical Technology, Inc., and "John and/or Jane Does 1-100" (D. Del. 2013): Represented Wright Medical in litigation alleging infringement of two patents entitled "Structures and Methods For Creating Cavities In Interior Body Regions."
  • AngleFix Tech, LLC v. Wright Medical Technology, Inc. (W.D. Tenn. 2013): Representing Wright Medical in litigation alleging infringement of a patent entitled "Multi-angular Fastening Apparatus and Method for Surgical Bone Screw/Plate Systems."
  • ConforMIS, Inc. v. Wright Medical Technology, Inc. (D. Mass. 2013): Represented Wright Medical in litigation alleging infringement of four patents related to the preparation of patient-specific cutting guides and fixtures for use in ankle and knee surgeries.
  • Browning v. Sturm, Ruger & Co., Inc. (D. Utah 2013): Represented Sturm, Ruger & Co. in litigation alleging infringement relative to U.S. Patents Nos. 8,156,675 and 8,484,875, both entitled "Firearm Magazine.”
  • Dr. Daniel S. Gabbay v. D.T. Davis Enterprises Ltd, trading as Hovertech International (E.D.Va. 2013): Representing Hovertech International in litigation alleging infringement of United States Patent Nos. 7,127,758 and 7,383,599, entitled "Active Head/Neck Positioning Device for Endotracheal Intubation."
  • American Energy Corporation v. American Energy Partners, LP, et al. (S.D. Ohio 2013): Representing American Energy Partners in litigation alleging trademark infringement.
  • Howmedica Osteonics Corp. and Stryker Corp. v. Wright Medical Technology, Inc., and Wright Medical Group, Inc., (D.N.J. 2012): Represented Wright Medical in litigation alleging infringement of trademarks pertaining to knee prostheses. This matter was resolved by settlement.
  • Bonutti Skeletal Innovations LLC v. Wright Medical Group, Inc., and Wright Medical Technology, Inc. (D. Del. 2012): Represented Wright Medical in litigation alleging infringement of a patent pertaining to knee replacement.
  • Howmedica Osteonics Corp. and Stryker Ireland Ltd. v. Wright Medical Technology, Inc. (D.N.J. 2011): Representing Wright Medical in litigation alleging infringement of a patent pertaining to hip prostheses.
  • Good Technology Corporation v. Little Red Wagon Technologies, Inc. (N.D. Tex. 2011): Represented Little Red Wagon Technologies in litigation alleging infringement of patents related to mobile or wireless devices or mobile or wireless networks, including secure mobile container, in conjunction with mobile app containerization, mobile exchange, synchronization, connectivity, access, security and mobile management products, software and services. This matter was resolved by settlement.
  • Ceecolor Industries LLC v. Oculis Labs Inc. - Represented Oculis Labs Inc. in this patent infringement litigation regarding a security system with proximity sensing for an electronic device.
  • Pi-Net International Inc. v. Capital One Financial Corporation, et al. - Representing ING Bank fsb in this patent infringement litigation regarding a value-added network system for enabling real-time, bidirectional transactions on a network.
  • Traffic Information, LLC v. Flixster, Inc., et al. - Representing ING Bank, fsb in this patent infringement litigation regarding a system for providing traffic information.
  • TQP Development, LLC v. Caterpillar Inc., et al. - Representing Safeway Inc. in this patent infringement litigation regarding an encrypted data transmission system employing means for randomly altering encryption keys.
  • Secure Axcess, LLC v. Bank of America Corp., et al. - Represented ING Bank, fsb in patent infringement litigation regarding a system and method for authenticating a web page.
  • Future Fibre Technologies Pty. Ltd. v. Optellios, Inc. - Represented Optellios, Inc. in this patent infringement matter and negotiated a stipulated consent order and judgment.
  • Represented a Virginia IT staffing and consulting company in connection with a two-step transaction involving a corporate restructuring in which the company contributed substantial amounts of its assets and liabilities to a Delaware limited liability company, which simultaneously sold its preferred units to a third party investor for $20 million.
  • Represented a corporation, based and operating in Kabul, Afghanistan, in a dispute against a U.S. government agency, in which the agency reversed its initial adverse determination and concluded that our client was eligible to continue to receive U.S. government funding.
  • Wawrzynski v. H.J. Heinz Co. - Obtained on behalf of a multinational corporation headquartered in Pittsburgh and two related entities a decision from U.S. District Court for the Western District of Pennsylvania denying the plaintiff's motion to dismiss the client's counterclaim challenging the validity of plaintiff's patent.
  • Stambler v. Atmos Energy Corp., et al., (E.D. Tex, Marshall Div.): Represented ING Bank against alleged infringement of a patent relating to data encryption. Case settled.
  • Stambler v. Intuit, Inc., et al. (E.D. Tex., Marshall Div.): Represented ING Bank against alleged infringement of a patent relating to data encryption; case settled after Markman hearing.
  • TQP Development, LLC v. Bank of New York Mellon Corp., et al. (E.D. Tex., Marshall Div.): Represented Walgreen Corp. against alleged infringement of a patent related to data encryption.
  • TQP Development, LLC v. Merrill Lynch, et. al. (E.D. Tex., Marshall Div.): Represented ING Bank, Sharebuilder Securities Corporation and Sharebuilder Corporation against alleged infringement of a patent relating to data encryption.
  • Conducted intellectual property due diligence in connection with the sale by Salar, Inc. of its 100 percent of its outstanding equity securities in a reverse triangular merger to Salar Acquisition Corp., a wholly owned subsidiary of Transcend Services, Inc. (NASDAQ:TRCR), for $11 million cash.
  • Evco Technology & Development Co. LLC v. Buck Knives, Inc., et al. - patent infringement litigation regarding compound hunting bow technology.
  • Rudd v. Lipidex Corporation - patent infringement litigation between licensor and licensee over ventilation technology.
  • Howmedica Osteonics v. Wright Medical Technology, Inc. - patent infringement litigation concerning artificial knee implant technology.
  • J.P. Donmoyer, Inc. v. Building Materials Corporation of America d/b/a GAF Materials Corporation, and D.M. Bowman, Inc. - patent infringement litigation regarding off-site dry-bulk storage monitoring technology.
  • Wright Medical Technology, Inc. v. OsteoImplant Technology, Inc. - patent infringement litigation concerning modular hip replacement prostheses.
  • Woodlark Circle, Inc et al v. Stryker Corporation et al. - Trademark Infringement litigation concerning use of a foot print silhouette mark on patient transfer mattresses.
  • Wound Care Strategies, Inc. v. Wound Care Centers, Inc. - trademark infringement litigation regarding conflict use of similar names.
  • Maid-Rite Steak Company, Inc. v. Maid Rite Corporation - trademark infringement litigation regarding conflict use of similar names.
  • Doeblers' Pennsylvania Hybrids, Inc. v. Doebler, et al. - trademark infringement litigation regarding conflict use of similar names.
  • Cap Index, Inc. v. Intelligent Direct, Inc., et al. - copyright infringement litigation concerning crime mapping software.

Admissions

  • Massachusetts
  • U.S. Patent and Trademark Office
  • Pennsylvania
  • New Jersey
  • U.S. Court of Appeals for the Federal Circuit
  • U.S. Court of Appeals for the Third Circuit
  • U.S. Court of Appeals for Veterans Claims
  • U.S. District Court for the Eastern District of Pennsylvania
  • U.S. District Court for the Middle District of Pennsylvania
  • U.S. District Court for the Western District of Pennsylvania
  • U.S. District Court for the District of New Jersey
  • U.S. District Court for the District of Massachusetts
  • U.S. District Court for the Eastern District of Texas
  • Supreme Court of Pennsylvania
  • Supreme Court of New Jersey
  • Supreme Court of Massachusetts

Education

  • Franklin Pierce Law Center, J.D., 1993
  • Bates College, B.A., Physics, 1978

Professional Activities

  • Pennsylvania Bar Association
  • Member, Commercialization Advisory Board, Hershey Medical Center

Honors and Awards

  • Listed as an "IP Star" in Managing Intellectual Property's IP Stars, 2013-2017
  • Listed in "Irish Legal 100" by the Irish Voice, 2009

Selected Publications

  • Co-author, "Taking On The Internet For Your Client's Reputation," The Legal Intelligencer, April 30, 2013
  • Quoted in "Counterfeiting Law Ruled Unconstitutional By Pa. Supreme Court," Andrews Litigation Reporter - Intellectual Property, October 20, 2009
  • Quoted in "What! EU Court Nixes Trademark for Exclamation Point," Andrews Litigation Reporter - Intellectual Property, October 20, 2009
  • Co-Author, "When 'Will' Won't Do In Employment Agreements," Law 360, September 22, 2008
  • "Strategic Alliances," Counsel to Counsel, August 1, 2008
  • With other Duane Morris lawyers, Sam wrote "Five Legal Issues Your Company Should Worry About (But Probably Doesn't)", which appeared in the November 2006 issue of Skylights, the in-flight magazine of Spirit Airlines. Sam's section discussed "patent mapping," the process of monitoring the patent portfolios of competing businesses to discern long-term trends and business strategies.
  • "Goose or Egg," a chapter in The Patent Leadership Conference, Top Partners on Best Practices & Winning Legal Strategies for Managing Patent Portfolios, Executive Leadership Series, ReedLogic Corporation 2006
  • "Of Better Mousetraps and Beaten Paths," a chapter in The Art and Science of Patent Law, Aspatore Press, Boston 2004
  • Profiled in "Inventing Success," Susquehanna Style Magazine, February 2002

Selected Speaking Engagements

  • "What Bankruptcy Lawyers Need to Know Before Advising Clients on the Effect of Bankruptcy on IP Licenses—Understanding the Latest Legal Developments and Trends and What They Mean for Clients," ExecSense Webinar
  • Moderator, "Let's Not Give it Away; Patents, Trademarks, Copyrights & Intellectual Property," Innovations Partnership's Conference for Science and Technology Entrepreneurs
  • "The Business of Art: Copyrights, Contracts and Intellectual Property," seminar sponsored by Jump Street, Harrisburg, Pennsylvania
  • "Security Interests in Intellectual Property," Pennsylvania Bar Institute's Business Lawyers' Institute, Philadelphia, Pennsylvania
  • "Security Interests in Intellectual Property," Commercial Document Series, PBI, Philadelphia, Pennsylvania and Pittsburgh, Pennsylvania
  • "Strategies for Inventors" and Internet/E-biz Risks," Central Pennsylvania Entrepreneur and Growth Company Day, Hershey, Pennsylvania
  • "Business Strategies for the Management of Innovation," 2010 ALMA Winter Gala and CLE Conference, New York City
  • "Intellectual Property for Small Businesses and Entrepreneurs," Murata Business Incubator, Carlisle, Pennsylvania and Kutztown Small Business Development Center, Dixon University Center, Harrisburg, Pennsylvania
  • "Patents, Trademarks and Copyrights," Central Pennsylvania Entrepreneurial Development Center, Harrisburg, Pennsylvania
  • "Patents, Trademarks and Copyrights," Pennsylvania Chamber of Commerce, E-Commerce Symposium, Harrisburg, Pennsylvania