Michael F Piscitelli

Michael F. Piscitelli is a shareholder and chair of the firm’s Intellectual Property Department. He focuses his practice on world-wide patent procurement, portfolio development, and counseling of clients ranging from start-ups to Fortune 500 corporations within the electrical, computer, video/imagery and electro‐mechanical fields. Mr. Piscitelli’s practice covers a wide range of technologies such as wireless communications (HSPA, LTE, 5G, IoT, Bluetooth, Zigbee, Thread), power control systems, video compression and delivery protocols (H.264 (AVC), H.265 (HEVC), VVC, DASH), artificial intelligence (machine learning, neural networks, and deep learning), blockchain, lasers, fiber optics, LEDs and other lighting technologies, load control systems, and complex medical devices. His portfolio management experience has enabled his clients to develop robust portfolios that deliver value back to the business.

Mr. Piscitelli has extensive experience charting world-wide patent matters to assist with the monetization of those assets. He also has vast experience conducting freedom-to-operate studies, drafting noninfringement/invalidity opinions, and performing competitive landscaping analysis that help his clients to assess and manage risk associated with launching new products. Additionally, Mr. Piscitelli has performed due diligence investigations to assist clients with determining the value of intellectual property to be acquired in connection with mergers and acquisitions, and also has experience analyzing, negotiating, and drafting license agreements within the public and private sector for his clients.

In addition to patent procurement, Mr. Piscitelli also counsels his clients through IP assertion and defense proceedings, including Federal Court litigation. He provides strategic counseling to clients, bringing a unique and well-rounded perspective of a skilled practitioner with experience both in procurement and in enforcement and defense. With regards to privacy laws, Mike has experience advising clients in data privacy to ensure they conform with state and international law.

Prior to his legal career, Mr. Piscitelli worked at a large electrical utility company, where he was responsible for performing circuit analysis on the distribution and transmission systems, and at a major semiconductor company where he supported the creation of large-scale printed circuit boards for use in the testing of semiconductor devices. This practical engineering experience allows him to be even more cognizant of his clients’ needs and business objectives.

Representative Matters
Experience prosecuting and managing portfolios related to:

• telecommunications technology, including HPA, 4G LTE, and 5G NR;
• video and video compression technology;
• computer software, including graphical user interfaces (GUIs), data structures, artificial intelligence (e.g., software implementing various neural networks and other machine learning technology), data security, and other software features;
• fiber optics, including the use and manufacturing of volume bragg gratings (VBGs);
• LED light sources;
• medical devices and software systems supporting medical devices;
• load control systems; and
• IOT systems.

Experience conducting clearance searches, freedom-to-operate analysis, and preparing non-infringement/invalidity opinions related to client products.

Experience supporting litigation and licensing efforts during prosecution of clients’ patent portfolios.

Experience in post-grant validity procedures, including U.S. inter-partes review and ex-parte reexamination, EPO opposition proceedings, and Chinese Invalidation Proceedings.