Professional Experience

Nicholas M. Cannella has over thirty-five years of experience as a litigator. Before joining Fitzpatrick in 1984, he served as law clerk to the Honorable Sol Wachtler, then one of the judges on New York State’s highest appellate court, and practiced in the litigation department of a large general practice firm, where he tried cases, both jury and nonjury, in the general commercial litigation field. Since joining Fitzpatrick, Mr. Cannella has been lead trial counsel in a variety of intellectual property cases, for clients such as Bristol-Myers Squibb, Canon, Gilead Sciences, GlaxoSmithKline, Merck, The Walt Disney Company, Union Carbide and Upsher-Smith. He also has argued appeals before the United States Court of Appeals for the Federal Circuit and the Fifth Circuit. In addition, Mr. Cannella has been involved in all aspects of licensing and transactional work on behalf of the firm’s clients.

His patent litigations include:

• Nano-Proprietary, Inc. v. Canon, obtaining the withdrawal of fraud claims against Canon and a jury verdict of no damages in a licensing dispute. On appeal, the jury verdict was affirmed by the Fifth Circuit and the trial court's pre-trial ruling terminating the license was reversed, Canon's license was reinstated and the license was found to extend not only to Canon, but to the involved Canon subsidiary as well.
  
  
• Canon v. GCC International Limited, obtaining a preliminary injunction (and affirmance on appeal) prohibiting infringement of Canon’s patent on certain toner cartridges for laser printers and fax machines. Canon subsequently was granted a consent judgment and permanent injunction.
  
  
• Canon v. Nu-kote Int’l., Inc., obtaining a preliminary injunction (and affirmance on appeal) prohibiting infringement of Canon’s patent covering ink cartridges used in certain Canon ink jet printers.
  
  
• Canon v. Densigraphix, obtaining a Consent Order and Permanent Injunction prohibiting infringement of a Canon patent on toner bottles for laser copiers.
  
  
• Michlin v. Canon, defending Canon against charges of infringement with respect to certain laser beam printer cartridges.
  
  
• CLI v. Canon, defending Canon against charges of infringement relating to digital image compression.
  
  
• Solarex v. Canon, defending Canon against charges of infringement relating to solar panels.
  
  
• Honeywell v. Canon, defending Canon against charges of infringement relating to single lens reflex cameras.
  
  
• BP v. Union Carbide, obtaining dismissal of a declaratory judgment action (and affirmance on appeal) seeking to invalidate a Union Carbide patent relating to gas bed fluidized technology for making plastics.
  
  
• Merck v. Biocraft, obtaining a preliminary injunction relating to Merck’s patent on its diuretic drug, Moduretic®, and trial judgment of validity and infringement.
  
  
• Aquatic Amusement Associates v. The Walt Disney Company, defending Disney against trade secret and patent infringement allegations.
  
  
• Vigil v. The Walt Disney Company, obtaining an affirmance on appeal of the district court’s dismissal of trademark and design patent claims against Disney.
  
  
• Schering Plough v. Upsher-Smith, defending Upsher Smith against charges of patent infringement on potassium supplements.
  
  
• GSK v. Dr. Reddy’s, relating to GSK’s patent on its migraine drug Imitrex®.
  
  
• SmithKline Beecham v. Teva Pharmaceuticals, relating to GlaxoSmithKline’s patent on its epilepsy drug Lamictal®.

Mr. Cannella currently serves as a member of the firm’s Management Committee, and previously served as the firm’s Recruiting Partner and Managing Partner.

Awards and Recognition

Mr. Cannella is listed in Legal 500 2007 in Patent Litigation: “mentioned by clients for his ‘overall depth of knowledge, trial experience, patience, diplomacy and flexibility.’” He was selected as a top intellectual property law practitioner in every edition since 1999 of Best Lawyers in America and in the Practical Law Company’s Which Lawyer Life Sciences: Intellectual Property 2005/2006 edition and the 2007 edition of Practical Law Company’s Which Lawyer Yearbook. He was also listed as a Top New York City Intellectual Property Litigator in the 2006, 2007, 2008, and 2009 issues of Super Lawyers: New York Metro Edition. Mr. Cannella was also recognized for his outstanding work in the patent category in Chambers USA 2008, 2009, and 2010 as an "extremely experienced trial lawyer who has a strong reputation in the electronics industry," and as "a fearless advocate who has the confidence and experience to try any case, and win." Nicholas Cannella is listed in Chambers Global 2010 as someone who "is widely recognized for his proficiency in patent trials."

For information on the selection processes, see:

Legal 500
Best Lawyers
Which Lawyer
Super Lawyers
Chambers and Partners

Education

J.D. cum laude, St. John's University School of Law, 1975
B.A., Fordham University, 1972

Bar Admissions

State of New York, 1977; U.S. Supreme Court; Federal Circuit Court of Appeals; Second Circuit Court of Appeals; Federal District Courts for the Southern, Eastern and Western Districts of New York

Professional Activities

American Bar Association; American Intellectual Property Law Association; Association of the Bar of the City of New York; New York Intellectual Property Law Association; New York State Bar Association; New York State, Appellate Division, 1st Department, Disciplinary Committee; Vice President and Member of the Board of Directors, St. John's University School of Law, Alumni Association, Adjunct Professor, St John’s University; Adjunct Professor, St. John’s University School of Law

Related Information

Representative Cases

Kirsch v. Canon USA, Inc. et al
E.D.MI 2009

In re: Halftone Color Separations ('809) Patent Litigation (Screentone Systems Corp., et al. v. Canon U.S.A., Inc., et al.)
C.D.CA, 2009

Nano-Proprietary, Inc. v. Canon Inc.
5th Cir. 2008

Canon Inc v. GCC International Limited, et al.
Fed. Cir. 2007

Nano-Proprietary, Inc. v. Canon Inc. and Canon U.S.A., Inc.
W.D. Tx. 2007

Canon Inc. v. GCC International Limited, et al.
S.D.N.Y. 2006

SmithKline Beecham Corporation v. Teva Pharmaceuticals USA, Inc.
D.N.J. 2004

Warner-Lambert Company v. Teva Pharmaceuticals Inc.
D.N.J. 2004

Knorr-Bremse v. Dana Corp.
Fed. Cir. 2004

Warner-Lambert Company v. Teva Pharmaceuticals USA
D.N.J. 2003

Warner-Lambert Co. v. Teva Pharmaceuticals USA,
D.N.J. 2002

Schwartz Pharma Inc., Schwartz Pharma AG and Warner-Lambert Co. v. Teva Pharmaceuticals USA
D.N.J. 2002

Canon Computer Systems, Inc. v. Nu-kote Int'l, Inc.
Fed. Cir. 1998

Events

5th Annual Conference on Corporate Intellectual Property in China 2010
LexisNexis
April 22-23, 2010

Trying A Patent Case In The Southern District Of New York
American Bar Association's Annual Meeting
August 8, 2008

Effective Conduct of IP Jury Trials
NYIPLA CLE Program
March 26, 2004

In The News

Fitzpatrick Listed as a Band 1 Intellectual Property Firm in Chambers USA 2010
Chambers USA
June, 2010

ACQ Law Awards
ACQ Finance Magazine
November 2009

Seven Fitzpatrick Lawyers Listed as Best IP Lawyers in America 2010
Best Lawyers in America 2010
October 2009

Nine Fitzpatrick Partners Named As Top New York Intellectual Property Litigators in the 2009 issue of Super Lawyers: New York Metro Edition
Super Lawyers: New York Metro Edition
October 2009

Fitzpatrick Listed as a Band 1 Intellectual Property Firm in Chambers USA 2009
Chambers USA 2009
June 2009

Seven Fitzpatrick Lawyers Listed as Best IP Lawyers in America 2009
Best Lawyers in America 2009
October 2008

Nine Fitzpatrick Partners Named As Top New York Intellectual Property Litigators in the 2008 issue of Super Lawyers: New York Metro Edition
Super Lawyers: New York Metro Edition 2008
October 2008

Seven Fitzpatrick Lawyers Listed as Best IP Lawyers in America 2008
Best Lawyers in America 2008
October 2007

Nine Fitzpatrick Partners Named As Top New York Intellectual Property Litigators in the 2007 issue of Super Lawyers: New York Metro Edition
Super Lawyers: New York Metro Edition 2007
September 2007

Fitzpatrick Attorneys Featured in New York Magazine Profile
New York Magazine
July 2-9, 2007

Fitzpatrick Named as Leading New York Firm
PLC Which Lawyer Yearbook 2007
May 2007

Seven Fitzpatrick Lawyers Listed as Best IP Lawyers in America 2007
Best Lawyers in America 2007
October 2006

Fitzpatrick Ranked Leading Firm in PLC Which Lawyer 2005/2006
PLC Which Lawyer 2005/2006
December 2005

Eight Fitzpatrick Lawyers Listed as Best IP Lawyers in America 2006, The Most Listed for IP in New York
Best Lawyers in America 2006
September 2005

Seven Fitzpatrick Lawyers Included on List of Best IP Lawyers in America
Best Lawyers in America
2005-2006

Seven Fitzpatrick Lawyers Listed as Best IP Lawyers in America
Best Lawyers in America
2003-2004

Press Releases

Fitzpatrick, Cella, Harper & Scinto Honored For Industry Excellence in Intellectual Property by Chambers & Partners
Chambers & Partners USA 2010
June 14, 2010

Fitzpatrick, Cella, Harper & Scinto Honored by Chambers & Partners in Tier 1 for New York Intellectual Property Law Firms
Chambers & Partners USA 2009
June 16, 2009

Fitzpatrick, Cella, Harper & Scinto Ranked #1 in Intellectual Property
Chambers USA 2008
June 16, 2008

Fitzpatrick Represents City of New York in NYPD and FDNY Trademark Infringement Suit
April 13, 2004