Victor Castellucci

Victor J. Castellucci is a registered patent attorney who has led the patent process for many of America’s largest and most successful corporations. He has broad experience in all aspects of patent prosecution in the electrical and mechanical arts, emphasizing computer hardware and software, robotic systems, telecommunications, networking and data encoding protocols, bioinformatics, and medical diagnostics systems.

Victor also provides strategic IP counsel including: preparation of opinions of counsel regarding validity, infringement, enforceability, and freedom to operate; analysis, evaluation, and management of technology portfolios; preparation of licensing and technology transfer agreements; and audits of in-house IP management practices.

He has provided opinions of counsel on some of the most contentious patents in recent memory and has evaluated high-profile patent portfolios on behalf of top online retailers, consumer electronics and microprocessor technology companies, and natural resource prospectors.

Prior to joining the firm, Victor served as an in-house IP executive and trusted advisor for several leading Silicon Valley enterprises where he excelled in the design of IP strategies, portfolio development, and inbound and outbound technology licensing campaigns.

During his time in-house with a leading Silicon Valley semiconductor company, he managed a portfolio of more than 600 assets and was credited with creating and negotiating the highest value patent license agreement in company history, generating more than $26.5 million in revenue.

EXPERIENCE :

• Represented an early-stage technology company in its acquisition of the assets of another technology company in exchange for equity in the acquirer. The client also raised capital in a private offering to further develop and commercialize the technology and fund the company’s operations for two years.
• Secured favorable results in enterprise-critical ex parte and inter partes reexamination proceedings for several leading corporations.
• Managed patent, trade dress, and trademark litigation matters in U.S. Federal District Courts resulting in favorable outcomes and lucrative settlement arrangements for litigation clients.
• Coordinated with sales and business development functions to draft technology license agreements and to optimize terms and conditions of counterparties’ agreements for various corporations.
• Authored unenforceability opinions which included a novel argument on materiality issues that was subsequently adopted by the Court of Appeals for the Federal Circuit.

EDUCATION :

• University of San Diego School of Law, J.D., 1999
• Princeton University, B.S.E., 1993

BAR ADMISSIONS :

• California
• District of Columbia
• United States Patent and Trademark Office
• Florida

COURT ADMISSIONS :

• U.S. Court of Appeals for the Ninth Circuit
• U.S. Court of Appeals for the Federal Circuit
• U.S. District Court — Northern District of California
• U.S. District Court — Central District of California
• U.S. District Court — Southern District of California