Skip to main content

Vincent M. Ferraro

Associate

[email protected]

+1.212.692.6214

Share:

Vincent’s practice focuses on patent disputes in Federal District Courts and before the U.S. Patent Trial and Appeal Board. With over 10 years of experience, Vincent has handled patent disputes involving telecommunications, cellphone and smartphone technology, digital photography, image processing, electronic circuitry, electrical components, computer software and hardware, LCD technology, data mining, financing, mechanical devices, medical devices and implants, consumer products, GPS technology, e-commerce, and Internet security. In patent litigation cases, he guides clients through all phases of the case, including pre-suit due diligence, claim construction, discovery, depositions, hearings, and trial.

Vincent also has significant experience representing clients in post-grant proceedings before the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office, including inter partes review (IPR) and covered business method (CBM) patent review proceedings. He has represented both petitioners and patent owners in these proceedings.

Vincent also regularly counsels clients on their IP portfolio strategies and assists them in developing design strategies for their products. He works closely with inventors, analyzes new inventions, drafts U.S. patent applications, and prosecutes patents before the U.S. Patent and Trademark Office in various high-technology fields and on consumer products. He also renders patent freedom-to-operate and validity opinions.

Prior to joining the firm, Vincent was an intellectual property attorney in the New York office of a general practice law firm based in New Jersey. Before this, he was a senior scientific advisor at an intellectual property law firm based in New Jersey. He started his career in IT at a large national payroll processing company.

Education

  • Seton Hall University (JD, cum laude)
  • Rutgers University (BS, Electrical and Computer Engineering)

Experience

Patent Trial and Appeal Board

  • Defense of Multiple IPRs concerning Multilayer Capacitor Technology – represented Patent Owners, American Technical Ceramics Corp. and AVX Corporation, in IPR proceedings before the PTAB concerning technology for multilayer capacitor structures.
  • Green Cross Corp. v. Shire Human Genetic Therapies, Inc. (IPR2016-00258) – represented Petitioner in IPR proceedings before the PTAB concerning the purification of I2S protein.

Federal District Court

  • Connectsoft, Inc. v. NEEO, Inc., 2:16-cv-00548 (ED TX) – Successfully represented the defendant in a patent infringement lawsuit before Judge Gilstrap relating to radio frequency technology. Resulted in a favorable settlement in 2017.

Recognition & Awards

  • Included on the New York Super Lawyers: Rising Star – Intellectual Property Litigation list (2017 - 2018)

Involvement

  • Member, New York Intellectual Property Law Association

Recent Insights

News & Press

Viewpoints

Viewpoint General

Precedential PTAB Panel Says Petitioners Can Join Their Own Earlier-Filed IPRs and Join New Issues in Limited Circumstance

March 19, 2019 | Blog | By William Meunier, Brad M Scheller, Vincent Ferraro, Rithika Kulathila

In its first decision since its inception, the Precedential Opinion Panel (“POP”) for the U.S. Patent Trial and Appeal Board (“Board”), in Proppant Express Investments, LLC v. Oren Technologies, LLC, IPR2018-00914, held that under 35 U.S.C. § 315(c) the Board has discretion to allow a party, in limited circumstances, to join its own earlier-filed inter partes review (“IPR”) and join new issues, even if the party was otherwise time-barred under 35 U.S.C. § 315(b).  Specifically, the Board may use this discretion only where fairness requires it and to avoid undue prejudice to a party.  The POP nevertheless denied Proppant Express Investments LLC’s (“Petitioner”) motion for joinder as Petitioner’s motion was “a result of Petitioner’s errors,” and therefore did not fall within the limited circumstances it envisioned.
Viewpoint General

Supreme Court Holds AIA Did Not Alter the Settled Meaning of “On Sale”

January 22, 2019 | Blog | By Brad M Scheller, Peter Snell, Vincent Ferraro

Today the United States Supreme Court unanimously affirmed the Federal Circuit and held that it remains the law under the America Invents Act (AIA) that a confidential sale to a third party can trigger the “on sale” bar to patentability.
Viewpoint General

Double Check Your Filings, A Cautionary Tale at the PTAB

January 2, 2019 | Blog | By John Bauer, Vincent Ferraro, Courtney Herndon

Recently in Nuna Baby Essentials, Inc. v. Britax Child Safety, Inc., IPR2018-01683, Paper No. 11 (PTAB Dec. 18, 2018), the Patent Trial and Appeal Board (“Board”) denied Petitioner’s motion to excuse the late filing of exhibits to the Petition, finding that Petitioner failed to establish good cause for such late filing or that consideration of the late-filed exhibits would be in the interests of justice.
Viewpoint General

PTAB Finds Recycled Art and Advanced State of Parallel District Proceeding Warrant Denial of IPR Trial

September 17, 2018 | Blog | By Peter Snell, Daniel Weinger, Vincent Ferraro, Chris Duerden

Last week the Patent Trial and Appeal Board (“PTAB”) provided yet another arrow in the patent owner’s quiver for defending against institution of IPRs.  In NHK International Corp. v. Intri-Plex Technologies, Inc., IPR2018-00752, the PTAB exercised its discretion under 35 U.S.C. § 325(d) and denied institution because the asserted art was already considered during the original examination of the patent.  The PTAB also found that denial was warranted under 35 U.S.C. § 314(a) in light of the additional factor that a district court trial on the same patent was imminent. 
The Patent Trial and Appeal Board (PTAB) issued an August 2018 update to the American Invents Act Trial Practice Guide (the “Updated TPG”).  The Updated TPG incorporates the PTAB’s current practices and provides further explanation of certain aspects of the PTAB’s standard practices to the public. 
In keeping with recent erosion of patent rights, patent owners’ power to control the post-sale use and sale of their patented products was severely limited this week by the U.S. Supreme Court in the highly anticipated case regarding the patent exhaustion doctrine, Lexmark Int’l, Inc. v. Impression Prods., Inc., No. 15-1189.

Federal Circuit to PTAB: No Short Cuts Allowed

April 25, 2017 | Blog | By Brad M Scheller, Vincent Ferraro

Today, the Federal Circuit, vacated-in-part and remanded the Patent Trial and Appeal Board’s obviousness determination regarding a Securus Technologies patent directed to systems and methods for reviewing conversation data for certain events and bookmarking portions of the recording when something of interest is said, finding that the Board failed to provide any explanation for its decision with respect to certain challenged claims.

The U.S. Supreme Court Hears Oral Argument in Much Anticipated Patent Exhaustion Case

March 24, 2017 | Blog | By Andrew DeVoogd, Vincent Ferraro

On Tuesday, the U.S. Supreme Court heard oral argument in the highly anticipated case regarding the patent exhaustion doctrine, Lexmark Int’l, Inc. v. Impression Prods., Inc., No. 15-1189.

Federal Circuit Corrects the Board’s “Too Exacting” Diligence Standard

November 21, 2016 | Blog | By Brad M Scheller, Vincent Ferraro

On November 15, 2016, a split panel of the Federal Circuit, consisting of Judges Moore and O’Malley, ruled that the antedating standard demanded by the Patent Trial and Appeal Board, requiring a “continuous exercise of reasonable diligence,” was too exacting and in conflict with Federal Circuit precedent.
The Federal Circuit has ruled that the Patent Trial and Appeal Board cannot deny Patent Owner an opportunity to address portions of a prior art reference first discussed in Petitioner’s Reply, and then rely on those same portions to hold the claims unpatentable.

News & Press

Fourteen Mintz attorneys have been named New York Super Lawyers for 2017 and thirteen have been named New York Rising Stars. New York Super Lawyers recognizes the top lawyers with the highest degree of peer recognition and professional achievements.