Duane Morris LLPPartner

Samuel William Apicelli

About Samuel William Apicelli

Samuel William Apicelli is a lawyer practicing patents, trademarks, copyrights. Samuel received a B.A. degree from Bates College in 1978, and has been licensed for 33 years. Samuel practices at Duane Morris LLP in Philadelphia, PA.

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Services

Areas of Law

  • Intellectual Property 3
    • Patents
    • Trademarks
    • Copyrights

Practice Details

  • Languages
    Italian
    German
  • Firm Information
    Position
    Partner
    Firm Name
    Duane Morris LLP
  • Representative Cases & Transactions
    Cases
    Representative Matters: Represented JPJ Group (formerly LSE:JPJ), a leading global online bingo-led operator, in its 490m acquisition of online gaming company Gamesys Holdings Ltd., thereby forming Gamesys Group (LSE:GYS).
    Represented X Core Technologies, a leader in the metal smart card field, in a sale of domestic
    foreign patents
    patent applications to Idemia, a French multinational company specializing in security
    identity solutions.
    Represented Aqua Pharmaceuticals in a $650 million product acquisition from Allergan's U.S. Medical Dermatology Unit.
    Represented H.C. Wainwright & Co. LLC, acting as sales agent, in a $12.5 million at-the-market (ATM) equity offering of common stock for Aethlon Medical, Inc. (Nasdaq: AEMD).
    Represented FBR Capital Markets & Co., acting as sales agent, in a $4 million at-the-market (ATM) equity offering of common stock for Cyclacel Pharmaceuticals, Inc. (Nasdaq: CYCC).
    Represented a specialty chemical company in closing a $175 million credit facility, comprised of revolving credit, term loan, swing line
    letters of credit sub-facilities. The credit agreement contains an accordion feature affording the client the right to increase the revolving credit facility size by $50 million.
    Biomedical Enterprises, Inc. v. Solana (W.D. Tex) Representing Wright Medical in litigation alleging infringement of a patent pertaining to joint compression staples.
    Secure Axcess, LLC v. U.S. Bank National Association et al (E.D. Tex) Represented ING Bank in litigation alleging infringement of a patent pertaining to internet security.
    Secure Axcess, LLC v. Ocwen Financial Corporation (E.D. Tex) Represented Ocwen in litigation alleging infringement of a patent pertaining to internet security.
    David Wawrzynski v. H.J. Heinz Co., et al. (3rd Circuit) Appeal in case in which plaintiff claimed Heinz used his ideas in Heinz's Dip
    Squeeze ketchup package.
    Howmedica Osteonics Corp. v. Zimmer, Inc. (U.S. Court of Appeals - Federal Circuit) Appeal from successful Markman hearing.
    Peroxychem LLC v. Innovative Environmental Technologies, Inc., et al., Civil Action No.: 14-cv-6446
    Innovative Environmental Technologies, Inc., v. Peroxychem LLC, et al., Civil Action No. 15-cv-3145, Representing PeroxyChem LLC in litigation alleging infringement of patent pertaining to environmental remediation.
    Represented NYX Gaming Group in a $105 million financing
    acquisition of Amaya (Alberta) Inc. (f/k/a Chartwell Technology Inc.)
    Cryptologic Limited. NYX Gaming Group has also entered into a preferred supplier licensing agreement with a subsidiary of Amaya Inc.
    Orthophoenix, LLC v. Wright Medical Technology, Inc.,
    John
    /or Jane Does 1-100 (D. Del.): Represented Wright Medical in litigation alleging infringement of two patents entitled Structures
    Methods For Creating Cavities In Interior Body Regions.
    AngleFix Tech, LLC v. Wright Medical Technology, Inc. (W.D. Tenn.): Representing Wright Medical in litigation alleging infringement of a patent entitled Multi-angular Fastening Apparatus
    Method for Surgical Bone Screw/Plate Systems.
    ConforMIS, Inc. v. Wright Medical Technology, Inc. (D. Mass.): Represented Wright Medical in litigation alleging infringement of four patents related to the preparation of patient-specific cutting guides
    fixtures for use in ankle
    knee surgeries.
    Browning v. Sturm, Ruger & Co., Inc.: Represented Sturm, Ruger & Co. in litigation alleging infringement relative to U.S. Patents Nos. 8,156,675
    8,484,875, both entitled Firearm Magazine.
    Dr. Daniel S. Gabbay v. D.T. Davis Enterprises Ltd, trading as Hovertech International (E.D.Va.): Representing Hovertech International in litigation alleging infringement of United States Patent Nos. 7,127,758
    7,383,599, entitled Active Head/Neck Positioning Device for Endotracheal Intubation.
    American Energy Corporation v. American Energy Partners, LP, et al. (S.D. Ohio): Representing American Energy Partners in litigation alleging trademark infringement.
    Howmedica Osteonics Corp.
    Stryker Corp. v. Wright Medical Technology, Inc.,
    Wright Medical Group, Inc., (D.N.J.): Represented Wright Medical in litigation alleging infringement of trademarks pertaining to knee prostheses. This matter was resolved by settlement.
    Bonutti Skeletal Innovations LLC v. Wright Medical Group, Inc.,
    Wright Medical Technology, Inc. (D. Del.): Represented Wright Medical in litigation alleging infringement of a patent pertaining to knee replacement.
    Howmedica Osteonics Corp.
    Stryker Irel
    Ltd. v. Wright Medical Technology, Inc. (D.N.J.): Representing Wright Medical in litigation alleging infringement of a patent pertaining to hip prostheses.
    Good Technology Corporation v. Little Red Wagon Technologies, Inc. (N.D. Tex.): Represented Little Red Wagon Technologies in litigation alleging infringement of patents related to mobile or wireless devices or mobile or wireless networks, including secure mobile container, in conjunction with mobile app containerization, mobile exchange, synchronization, connectivity, access, security
    mobile management products, software
    services. This matter was resolved by settlement.
    Ceecolor Industries LLC v. Oculis Labs Inc. - Represented Oculis Labs Inc. in this patent infringement litigation regarding a security system with proximity sensing for an electronic device.
    Pi-Net International Inc. v. Capital One Financial Corporation, et al. - Representing ING Bank fsb in this patent infringement litigation regarding a value-added network system for enabling real-time, bidirectional transactions on a network.
    Traffic Information, LLC v. Flixster, Inc., et al. - Representing ING Bank, fsb in this patent infringement litigation regarding a system for providing traffic information.
    TQP Development, LLC v. Caterpillar Inc., et al. - Representing Safeway Inc. in this patent infringement litigation regarding an encrypted data transmission system employing means for r
    omly altering encryption keys.
    Secure Axcess, LLC v. Bank of America Corp., et al. - Represented ING Bank, fsb in patent infringement litigation regarding a system
    method for authenticating a web page.
    Future Fibre Technologies Pty. Ltd. v. Optellios, Inc. - Represented Optellios, Inc. in this patent infringement matter
    negotiated a stipulated consent order
    judgment.
    Represented a Virginia IT staffing
    consulting company in connection with a two-step transaction involving a corporate restructuring in which the company contributed substantial amounts of its assets
    liabilities to a Delaware limited liability company, which simultaneously sold its preferred units to a third party investor for $20 million.
    Represented a corporation, based
    operating in Kabul, Afghanistan, in a dispute against a U.S. government agency, in which the agency reversed its initial adverse determination
    concluded that our client was eligible to continue to receive U.S. government funding.
    Wawrzynski v. H.J. Heinz Co. - Obtained on behalf of a multinational corporation headquartered in Pittsburgh
    two related entities a decision from U.S. District Court for the Western District of Pennsylvania denying the plaintiff's motion to dismiss the client's counterclaim challenging the validity of plaintiff's patent.
    Stambler v. Atmos Energy Corp., et al., (E.D. Tex, Marshall Div.): Represented ING Bank against alleged infringement of a patent relating to data encryption. Case settled.
    Stambler v. Intuit, Inc., et al. (E.D. Tex., Marshall Div.): Represented ING Bank against alleged infringement of a patent relating to data encryption
    case settled after Markman hearing.
    TQP Development, LLC v. Bank of New York Mellon Corp., et al. (E.D. Tex., Marshall Div.): Represented Walgreen Corp. against alleged infringement of a patent related to data encryption.
    TQP Development, LLC v. Merrill Lynch, et. al. (E.D. Tex., Marshall Div.): Represented ING Bank, Sharebuilder Securities Corporation
    Sharebuilder Corporation against alleged infringement of a patent relating to data encryption.
    Conducted intellectual property due diligence in connection with the sale by Salar, Inc. of its 100 percent of its outst
    ing equity securities in a reverse triangular merger to Salar Acquisition Corp., a wholly owned subsidiary of Transcend Services, Inc. (NASDAQ:TRCR), for $11 million cash.
    Evco Technology & Development Co. LLC v. Buck Knives, Inc., et al. - patent infringement litigation regarding compound hunting bow technology.
    Rudd v. Lipidex Corporation - patent infringement litigation between licensor
    licensee over ventilation technology.
    Howmedica Osteonics v. Wright Medical Technology, Inc. - patent infringement litigation concerning artificial knee implant technology.
    J.P. Donmoyer, Inc. v. Building Materials Corporation of America d/b/a GAF Materials Corporation,
    D.M. Bowman, Inc. - patent infringement litigation regarding off-site dry-bulk storage monitoring technology.
    Wright Medical Technology, Inc. v. OsteoImplant Technology, Inc. - patent infringement litigation concerning modular hip replacement prostheses.
    Woodlark Circle, Inc et al v. Stryker Corporation et al. - Trademark Infringement litigation concerning use of a foot print silhouette mark on patient transfer mattresses.
    Wound Care Strategies, Inc. v. Wound Care Centers, Inc. - trademark infringement litigation regarding conflict use of similar names.
    Maid-Rite Steak Company, Inc. v. Maid Rite Corporation - trademark infringement litigation regarding conflict use of similar names.
    Doeblers' Pennsylvania Hybrids, Inc. v. Doebler, et al. - trademark infringement litigation regarding conflict use of similar names.
    Cap Index, Inc. v. Intelligent Direct, Inc., et al. - copyright infringement litigation concerning crime mapping software.
    Issued Patent: Prosecuted U.S. Patent No. 11,033,304, pertaining to metatarsal fixation device, system
    method.
    Prosecuted U.S. Patent No. 11,020,130, pertaining to drill alignment guide.
    Prosecuted U.S. Patent No. 11,013,608, pertaining to talar bone plate.
    Prosecuted U.S. Patent No. 11,013,506, pertaining to partially assembled knotless suture construct.
    Prosecuted U.S. Patent No. 11,007,068, pertaining to instruments for preparing bone implants.
    Prosecuted U.S. Patent No. 11,006,988, pertaining to orthopedic plate for use in small bone repair.
    Prosecuted U.S. Patent No. 11,006,967, pertaining to cartilage removal tool
    method.
    Prosecuted U.S. Patent No. 10,993,710, pertaining to syndesmosis construct.
    Prosecuted U.S. Patent No. 10,987,114, pertaining to instrument for intra-operative implant templating using fluoroscopy.
    Prosecuted U.S. Patent No. 10,966,764, pertaining to knotless suture locking bone plate.
    Prosecuted U.S. Patent No. 10,959,766, pertaining to wire tensioner tip.
    Prosecuted U.S. Patent No. 10,940,012, pertaining to talar dome with angled holes.
    Prosecuted U.S. Patent No. 10,939,922, pertaining to variable angle cutting guide
    method of using the same.
    Prosecuted U.S. Patent No. 10,918,400, pertaining to procedure for repairing foot injury.
    Prosecuted U.S. Patent No. 10,893,878, pertaining to systems
    methods for implanting surgical implants.
    Prosecuted U.S. Patent No. 10,893,877, pertaining to guided punch for talar augments.
    Prosecuted U.S. Patent No. 10,888,340, pertaining to method
    cut guide for biplanar wedge osteotomy.
    Prosecuted U.S. Patent No. 10,888,336, pertaining to ankle replacement system
    method.
    Prosecuted U.S. Patent No. 10,881,436, pertaining to implant with intramedullary portion
    offset extramedullary portion.
    Prosecuted U.S. Patent No. 10,869,706, pertaining to fixation device for proximal humerus fractures.
    Prosecuted U.S. Patent No. 10,849,669, pertaining to method
    device for insertion of orthopedic fixation pin with blind hole.
    Prosecuted U.S. Patent No. 10,799,364, pertaining to revision implant augments, systems,
    methods.
    Prosecuted U.S. Patent No. 10,736,678, pertaining to compression plate kit
    methods for repairing bone discontinuities.
    Prosecuted U.S. Patent No. 10,736,676, pertaining to orthopedic implant kit.
    Prosecuted U.S. Patent No. 10,736,645, pertaining to implant suitable for calcaneal osteotomy.
    Prosecuted U.S. Patent No. 10,729,453, pertaining to guidance system for hallux valgus correction.
    Prosecuted U.S. Patent No. 10,709,566, pertaining to implant
    method for ankle syndesmosis treatment.
    Prosecuted U.S. Patent No. 10,682,168, pertaining to intramedullary implant with proximal plate
    method for its use.
    Prosecuted U.S. Patent No. 10,660,671, pertaining to circular fixator system
    method.
    Prosecuted U.S. Patent No. 10,653,465, pertaining to metatarsal fixation device, system
    method.
    Prosecuted U.S. Patent No. 10,653,432, pertaining to osteotomy guide.
    Prosecuted U.S. Patent No. 10,631,900, pertaining to orthopedic compression/distraction device.
    Prosecuted U.S. Patent No. 10,624,674, pertaining to circular fixator system
    method.
    Prosecuted U.S. Patent No. 10,568,744, pertaining to implant peg with multiple components.
    Prosecuted U.S. Patent No. 10,470,782, pertaining to guidance system
    method for bone fusion.
    Prosecuted U.S. Patent No. 10,463,407, pertaining to fusion implant.
    Prosecuted U.S. Patent No. 10,456,265, pertaining to fixation mechanism for an implant.
    Prosecuted U.S. Patent No. 10,456,179, pertaining to intramedullary ankle technique
    system.
    Prosecuted U.S. Patent No. 10,413,417, pertaining to stabilized total ankle prosthesis.
    Prosecuted U.S. Patent No. 10,413,308, pertaining to patient-specific surgical devices, systems,
    methods.
    Prosecuted U.S. Patent No. 10,390,842, pertaining to geared instrument for tibial stem reaming or removal.
    Prosecuted U.S. Patent No. 10,376,286, pertaining to fixation device.
    Prosecuted U.S. Patent No. 10,327,906, pertaining to modular talar fixation method
    system.
    Prosecuted U.S. Patent No. 10,321,922, pertaining to ankle replacement system
    method.
    Prosecuted U.S. Patent No. 10,299,840, pertaining to hammertoe implant
    instrument.
    Prosecuted U.S. Patent No. 10,292,743, pertaining to surgical staple.
    Prosecuted U.S. Patent No. 10,278,828, pertaining to ball
    socket implants for correction of hammer toes
    claw toes.
    Prosecuted U.S. Patent No. 10,226,351, pertaining to revision implant augments, systems,
    methods.
    Prosecuted U.S. Patent No. 10,213,241, pertaining to method
    device for insertion of orthopedic fixation pin with blind hole.
    Prosecuted U.S. Patent No. 10,206,728, pertaining to fixation device for proximal humerus fractures.

Experience

  • Bar Admission & Memberships
    Admissions
    1993, Massachusetts
    1997, New Jersey
    1997, Pennsylvania
    U.S. Court of Appeals for the Third Circuit
    U.S. District Court for the Middle District of Pennsylvania
    U.S. District Court for the District of Massachusetts
    Supreme Court of New Jersey
    U.S. Court of Appeals for the Federal Circuit
    U.S. District Court for the Eastern District of Pennsylvania
    U.S. District Court for the District of New Jersey
    Supreme Court of Pennsylvania
    U.S. Patent and Trademark Office
    U.S. Court of Appeals for Veterans Claims
    U.S. District Court for the Western District of Pennsylvania
    U.S. District Court for the Eastern District of Texas
    Supreme Court of Massachusetts
    Memberships

    Professional Activities

    •Pennsylvania Bar Association
    •Member, Commercialization Advisory Board, Hershey Medical Center

  • Education & Certifications
    Law School
    Franklin Pierce Law Center
    Class of 1993
    J.D.
    Other Education
    Bates College
    Class of 1978
    B.A.
    Physics
  • Personal Details & History
    Age
    Born in 1956
    Neptune, New Jersey, March 25, 1956
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