Daniel Vivarelli

Daniel G. Vivarelli, Jr.’s practice focuses on intellectual property, including patent litigation and patent prosecution. Dan focuses his practice on computer patent litigation, prosecution and counseling.

Dan has patent litigation experience with cases involving software-related innovations. Dan also serves as lead counsel in several Patent Office proceedings.

Dan also manages the several large patent portfolios and where he counsels clients on license agreements directs patent prosecution strategies in numerous software-related technologies including electronic parking meters, financial transaction systems, consumer payment systems, mobile communications, and data storage systems.

Dan is admitted to the US District Court for the Eastern District of Texas, the US Court of Appeals for the Second Circuit, and the US Court of Appeals for the Federal Circuit.

Experience:

• Lead counsel in district court litigation involving electronic parking meters; case is pending.
• Counsel for defendant in case involving payment verification; case is pending.
• Counsel for defendant in case involving website presentation technology; case is pending.
• Counsel for defendant in case involving online transaction processing; case is pending.
• Lead counsel defending four inter partes reexamination proceedings; all cases on appeal to PTAB.
• Counsel for defendant in case involving transaction processing; case settled favorably.
• Counsel for defendant in case involving object oriented programming; case settled favorably.
• Briefed and argued claim construction positions on behalf of all opposing parties in a Multidistrict Litigation proceeding in the Western District of Pennsylvania.
• Lead appellate counsel in Second Circuit appeal relating to denial of discovery.
• Lead counsel in miscellaneous action in the Southern District of New York relating to a motion to quash.
• Argued summary judgment motion on behalf of a large financial institution in the Eastern District of Texas.
• Manage all aspects of discovery in defending allegations of patent infringement against a large financial institution, including taking depositions, preparing claim construction briefs, summary judgment motions and expert reports.
• Integral member of trial team handling the enforcement of several hearing aid patents.
• The jury returned a favorable verdict, finding willful patent infringement and awarded $31 million in damages against two defendants. Handled numerous discovery matters and preparation of the pre-trial order, assisted with the preparation and examination of witnesses, and drafted post-trial motions.
• Handled discovery matters and pre-trial preparations in a federal district court case that settled immediately before trial.
• Integral member of trial team handling the enforcement of several electronic procurement systems. Assisted with the infringement analysis, evaluation of alleged prior art and the preparation and examination of witnesses on issues relating thereto.
• Case was favorably settled while awaiting the court’s decision following a four week trial.
• Manage patent portfolio of a large financial services corporation.
• Manage US patent prosecution for several foreign-based clients.
• Represented sole inventor in an Ex Parte Reexamination of a business method patent.
• Conducted due diligence investigations on behalf of worldwide media conglomerate.
• Rendered opinions concerning the infringement, validity, and enforceability of patents.
• Represented leading financial institution in civil litigation matter.

EDUCATION:

• JD, George Mason University Antonin Scalia Law School, 2002
• BS, Computer Science, Wake Forest University, cum laude, 1999

BAR ADMISSIONS:

• District of Columbia
• US Patent and Trademark Office

Memberships:

• Registered to practice before the United States Patent and Trademark Office
• American Intellectual Property Law Association