Vincent C. Capati

/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 focus on 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.

/Representative experience

Intellectual Property and Commercial Transactions

• Represent Cedars-Sinai Medical Center, a nonprofit hospital and multi-specialty academic health science center, on tech transfer matters, including licensing and spin-off transactions.
• Represent Codagenix, Inc., a clinical-stage biotechnology company developing prophylactic vaccines and oncolytic virus therapies, on tech transfer matters, including licensing and commercial transactions.
• 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
• Close a deal for DeLaval/West Agro, which provides integrated solutions to the dairy sector, regarding the sale of its Cleaning Solutions division to Zeco/Vincit, a chemistries, sanitation, and engineering company. Support the client in closing the complex carveout transaction.
• 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

Patent Litigation

• 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

/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