Nicholas M. Cannella

Nicholas M. Cannella

Retired Partner, New York

Few litigators have the experience or reputation that Nick Cannella has gained over the course of his forty-one year career. Nick tried his first jury case in 1978, following a clerkship with the Honorable Sol Wachtler, a judge on New York State's highest court. He is known as “a fearless advocate who has the confidence and experience to try any case, and win” (Chambers USA, 2010) and “is widely recognized for his proficiency in patent trials” (Chambers Global, 2010). Nick is a Fellow of the American College of Trial Lawyers.

He has been lead trial counsel in a variety of intellectual property cases in the federal district courts and the International Trade Commission and also has argued appeals before the United States Courts of Appeals for the Federal Circuit and the Fifth Circuit. Nick is also proud to have started his career as a law clerk to the Honorable Sol Wachtler on New York State’s highest appellate court.

Nick is a member of the Board of Directors of the Federal Circuit Bar Association and served as Co-Chair of the FCBA's International Series/Global Series Committee from 2013-2016. Nick also serves on the Boards of Directors of the Legal Aid Society and of the Alumni Association of St. John's Law School (Past President, 2013-14).

During his time at the firm, Nick served as its Recruiting Partner, Managing Partner, a member of the Management Committee, Chairman and Chairman Emeritus of that Committee.

Case Highlight
In re Certain Toner Cartridges and Components Thereof
USITC (2015)
Between 2013-2015, Nick helped long-time Fitzpatrick client Canon obtain two of only five general exclusion orders issued by the International Trade Commission during that three-year period. The general exclusion orders encompass seven patents protecting Canon’s valuable toner cartridge technology, and prohibit the importation of all infringing products irrespective of source. In related district court litigations, Canon obtained 40 permanent injunctions against more than 60 defendants.
What Others Say
  • “[Nicholas Cannella is] a steady litigator who is well known – and respected –among judges in New York, Delaware and New Jersey.” (IAM Patent 1000 2015)
  • “an extremely experienced trial lawyer who has a strong reputation in the electronics industry” (Chambers USA 2008)
  • “mentioned by clients for his overall depth of knowledge, trial experience, patience, diplomacy and flexibility” (Legal 500 2007)
Representative Matters
  • Intellectual Ventures v. Canon, obtaining a jury verdict of no infringement of certain Intellectual Ventures’ patents relating to digital cameras and camcorders.
  • In re Certain Toner Cartridges and Components Thereof, obtaining ITC consent order prohibiting importation and sale of laser beam printer toner cartridges.
  • Kirsch v. Canon USA, Inc. et al., obtaining two favorable summary judgment decisions on issues of willful infringement and convoyed sales damages on behalf of Canon U.S.A. In addition, in cooperation with counsel for Xerox Corporation in a companion case involving the same patent, assisted in obtaining a third summary judgment finding the Kirsch patent invalid.
  • In re: Halftone Color Separations ('809) Patent Litigation (Screentone Systems Corp., et al. v. Canon U.S.A., Inc., et al.), obtaining an order dismissing with prejudice all claims against Canon U.S.A. in this multi-district litigation.
  • Nano-Proprietary, Inc. v. Canon, obtaining the withdrawal of fraud claims 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.
  • Merck v. Alcon, relating to Merck’s patent on its glaucoma drug, Timoptic®
  • 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®.
  • Astellas v. Teva, relating to Astellas’ patent on its overactive bladder drug, Vesicare®.
  • Gilead Sciences v. Teva, relating to the patent portfolio covering Gilead’s HIV drugs, Emtriva®, Truvada® and Atripla®.
  • Gilead in connection with its acquisition of Pharmasset and its HIV patent portfolio.
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