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Vito J. DeBari

Partner

Phone: 212.715.9249 Fax: 212.715.8000 New York

Mr. DeBari's practice focuses primarily on intellectual property litigation, counseling, and transactional matters involving intellectual property rights, including representation of both patentees and accused infringers in patent infringement actions. Mr. DeBari has litigated patent infringement actions in various district courts throughout the United States and before the Court of Appeals for the Federal Circuit. A significant portion of Mr. DeBari’s practice involves the representation of Japanese clients.

Mr. DeBari’s recent litigation experience includes successfully obtaining from the Court of Appeals for the Federal Circuit a grant of a petition for writ of mandamus which resulted in a landmark decision in In re TS Tech USA Corp., et al., in which the Federal Circuit for the first time ordered the transfer of a patent case out of the Eastern District of Texas. This win has been profiled in the following articles, many of which have quoted Mr. DeBari: "Federal Circuit Decision Sparks End of Rocket-Docket," Managing Intellectual Property; "Impact of In re TS Tech USA Corp. Decision," Intellectual Property Today; "The Eastern District of Texas - No Longer The Venue of Choice?" The Metropolitan Corporate Counsel; "Federal Circuit Moves Infringement Case Out of Eastern Texas 'Plaintiff-Friendly' Court," BNA's Patent, Trademark & Copyright Journal; "Federal Circuit Orders Venue Transfer for Car Headrest Patent Dispute," Bloomberg Law Reports; "Is the Marshall, Texas, Patent Docket Doomed?" The AmLaw Daily; and "Federal Circuit Applies Volkswagen to Patent Case," ABA Litigation News.

Mr. DeBari also provides counseling to clients in connection with the evaluation of inventions for patentability, product clearance evaluations, procurement of patent rights, patent infringement and validity opinions, as well as licensing and corporate transactions involving intellectual property rights. Mr. DeBari’s counseling and litigation experience has involved a variety of diverse technology areas, including telecommunications, semiconductors, digital imaging, medical devices/scanners, fiber optic technology, satellite radio devices/services, manufacturing, automotive technologies and consumer products.

Representative Litigations 

  • Trustees of Boston University v. Seoul Semiconductor Co., Ltd., et al. (D. Mass.) Representing Seoul Semiconductor Co., Ltd. and related defendants in a patent infringement litigation involving technology related to the structure and fabrication of gallium nitride semiconductor devices used to make light emitting diodes.
  • Toyoda Gosei Co., Ltd. v. Formosa Epitaxy Inc. (N.D. Cal.) - Represented plaintiff Toyoda Gosei Co., Ltd. in a patent infringement litigation involving seven patents directed to improvements in technology related to light emitting semiconductor devices. 
  • Bluestone Innovations Texas, LLC v. Epistar Corp., et al. (E.D. Texas) - Represented Toyoda Gosei Co., Ltd. and related defendants in a patent infringement litigation involving technology related to the fabrication of light emitting diodes and laser diodes which concluded in a favorable settlement.
  • Lear Corporation v. TS Tech USA Corp., et al. (E.D. Texas, S.D. Ohio) – Represented defendants in a patent infringement litigation involving active headrest technology for automobiles. Recently succeeded in obtaining from the Federal Circuit a grant of defendants' petition for writ of mandamus ordering the district court to transfer the case from the E.D. Texas to the S.D. Ohio. 
  • Consumer Satellite Radio LLC v. Sirius XM Radio Inc., et al. (E.D. Texas) – Represented defendants in a patent infringement litigation involving content distribution methods for satellite radio systems which concluded in a favorable settlement.
  • Humanscale Corp. v. Weber Knapp Co. (E.D. Texas) – Represented defendant Weber Knapp Co. in a patent infringement litigation involving ergonomic keyboard support mechanisms which concluded in a favorable settlement. 
  • Finisar v. Sirius Satellite Radio (E.D. Texas) – Successfully defended Sirius Satellite Radio in a patent infringement action involving data transmission technology, resulting in dismissal of the case. 
  • Gebre v. Sirius Satellite Radio (D. Utah) – Defended Sirius Satellite Radio in a patent infringement action involving navigation system technology, resulting in a favorable settlement. 
  • Rothschild v. Toyoda Gosei Co., Ltd., et al. (S.D.N.Y.) – Represented defendant Toyoda Gosei Co., Ltd., a Japanese company which is one of the world's largest producers of light emitting diodes, in a patent infringement litigation involving LED technology which concluded in a favorable settlement. 
  • Sumitomo Electric v. Furukawa Electric Co., Ltd., et al. (D. Del.) – Represented defendant Furukawa Electric Co. Ltd., a Japanese company which is one of the world's largest producers of optical communications products, in a patent infringement action involving semiconductor laser technology which concluded in a favorable settlement. 
  • Phonometrics v. ITT Sheraton/Westin (S.D. Fla.) – Represented defendants in a patent infringement action involving call cost accounting technology. Succeeded in obtaining summary judgment dismissal based upon non-infringement and awards of attorneys fees and costs, which were affirmed by the Federal Circuit. 
  • Chan v. Canon Inc. et al. (N.D. Cal.) – Represented defendant Canon in a patent infringement action involving digital storage and distribution technology which concluded in a favorable settlement. 
  • GTE v. Nokia, et al. (E.D. Va.) – Represented defendant Nokia in a patent infringement action involving over the air activation technology, obtaining a favorable claim construction from the court which precipitated settlement of the case. 
  • Semmler v. Honda (S.D. Ohio) – Represented defendant Honda in a patent infringement action involving automotive fuel control system and succeeded in obtaining summary judgment dismissal based on non-infringement and invalidity of the patent-in-suit which was affirmed by the Federal Circuit.

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J.D., Fordham University School of Law, 1995
  • Notes and Comments Editor, International Law Journal
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Bachelor of Engineering, Stevens Institute of Technology, 1988
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New York, 1996
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U.S. Patent & Trademark Office, 1993
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United States Court of Appeals for the Federal Circuit, 1997
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United States District Court for the Southern District of New York, 1996
    -Intellectual Property Owners Association
    -American Bar Association
    -American Intellectual Property Law Association
    -New York Intellectual Property Law Association
    -New Jersey Intellectual Property Law Association
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Italian