Daniel G. Vivarelli, Jr.

Daniel Vivarelli is a Shareholder based in Butzel's Washington, D.C. office. Mr. Vivarelli's practice focuses on intellectual property, including trade secret and patent litigation, intellectual property licensing, and patent prosecution and counseling.

Mr. Vivarelli represents clients in high-stakes patent, trade secrets, and trademark litigation. He has served as trial counsel in several software-related trade secrets and patent matters and has also been lead counsel in numerous Patent Office proceedings.

Mr. Vivarelli also advises business teams on IP-related transaction provisions in various types of agreements; manages client IP portfolios and supervises outside patent prosecution counsel; performs invention mining and evaluation to support new product launches; and supports business needs for creative licensing of IP, patent enforcement, and new business opportunities.

Mr. Vivarelli is admitted to the US District Court for the Eastern District of Texas, the US Court of Appeals for the Second Circuit, and the US Court of Appeals for the Federal Circuit.

Speaking Engagements:

• Speaker, Employee Mobility Shouldn’t Mean Trade Secret Mobility, March 18, 2020

Published Works:

• Author, Your Confidential Business Information Was Published. Can It Still Be a Trade Secret?, Intellectual Property and Technology Law Journal, May 2022
• Co-author, INSIGHT: Overcoming Patent Subject Matter Eligibility Rejections, Bloomberg Law, May 13, 2020
• Co-author, 2014 Patent Damages Year In Review, 2015
• Co-author, 2013 Patent Damages Year In Review, 2014
• Forum Selection Clauses: Are You Sure That Is What You Want? February 10, 2022
• Your Confidential Business Information Was Published. Can It Still Be A Trade Secret? February 8, 2022
• Keeping Your Trade Secrets “Secret” During a Time of Increased Remote Work Due to COVID-19, March 24, 2020
• Marking Your Territory in the Patent World: The Basics of Physical vs. Virtual Patent Marking, January 30, 2018
• Federal Circuit Gives Challengers Another Tool To Invalidate Software-Based Inventions, June 18, 2015
• Federal Circuit Addresses Key Damages Issues in Vacating $386 Million Patent Verdict, September 18, 2014
• Supreme Court Strikes Down Alice Corporation's Computer-Implemented Business Methods and Systems as Patent Ineligible, June 20, 2014
• Eastern District of Texas Adopts Model Order Aimed at Reducing Cost of Patent Litigation, November 25, 2013
• Federal Circuit Reminds Us That IP Assignments In Employee Agreements Are Important, August 1, 2012
• Five Things You Should Know About The Replacement of Inter PartesReexamination with Inter Partes Review on September 16, 2012, July 26, 2012
• Federal Circuit Turns Back the Clock on Patent Eligibility, October 31, 2008

All Related Practice Areas

Education

George Manson University Antonin Scalia Law School (J.D., 2002)

Wake Forest University (B.S., cum laude, Computer Science, 1999)

Admissions

Awards & Recognitions

Legal 500, Recommended for Patent: Litigation (Full Coverage), 2020

Super Lawyers, "Rising Star", Intellectual Property Litigation, 2013-2018

• Lead counsel for defendant in case involving user interface functionality; case is pending.
• Lead counsel for defendant in federal common law trademark dispute, case is pending.
• Opinion counsel for several auto suppliers, providing non-infringement and/or invalidity opinions as appropriate.
• Counsel for defendant in case involving auto parts, case is pending.
• Counsel for plaintiffs in a district court litigation involving theft of trade secrets related to PVT simulation software; obtained litigation-ending sanctions against all defendants for significant destruction of evidence during discovery.
• Outside counsel to an energy services company in various licensing matters involving hydraulic fracture mapping technology.
• Lead trial counsel in federal arbitration involving electronic parking meters.
• Trial counsel in district court litigation involving theft of trade secrets related to hydraulic fracture mapping; successfully tried case in arbitration and obtained permanent injunction against defendants.
• Successfully represented client in multiple Federal Circuit appeals involving electronic parking meters.
• Lead counsel in district court litigation involving electronic parking meters.
• Counsel for defendant in case involving payment verification; case settled favorably.
• Counsel for defendant in case involving website presentation technology; case settled favorably.
• Counsel for defendant in case involving online transaction processing; case settled favorably.
• Lead counsel defending four inter partes reexamination proceedings.
• Counsel for defendant in case involving transaction processing; case settled favorably.
• Counsel for defendant in case involving object oriented programming; case settled favorably.
• Briefed and argued claim construction positions on behalf of all opposing parties in a Multidistrict Litigation proceeding in the Western District of Pennsylvania.
• Lead appellate counsel in Second Circuit appeal relating to denial of discovery in post-grant proceeding.
• Lead counsel in miscellaneous action in the Southern District of New York relating to a motion to quash.
• Argued summary judgment motion on behalf of a large financial institution in the Eastern District of Texas.
• Managed all aspects of discovery in defending allegations of patent infringement against a large financial institution.
• Integral member of trial team handling the enforcement of several hearing aid patents. The jury returned a favorable verdict, finding willful patent infringement and awarded $31 million in damages against two defendants.
• Handled discovery matters and pre-trial preparations in a federal district court case that settled immediately before trial.
• Integral member of trial team handling the enforcement of several electronic procurement systems. Case was favorably settled while awaiting the court's decision following a four-week trial.
• Managed several large patent portfolios for various clients.
• Managed US patent prosecution for several foreign-based clients.
• Represented sole inventor in an Ex Parte Reexamination of a business method patent.
• Conducted due diligence investigations on behalf of worldwide media conglomerate.
• Rendered opinions concerning the infringement, validity, and enforceability of patents.
• Represented leading financial institution in civil litigation matter.