biography

Ted is an intellectual property attorney working in all areas of IP, with particular expertise in patent prosecution, advising, and litigation. He concentrates his practice in patent preparation, prosecution, due diligence, and opinion work in the electrical and medical device arts.

He was most recently the head of in-house patent prosecution at InterDigital, a company with one of the world’s most extensive and licensed telecommunications patent portfolios, where he managed a team of attorneys and agents in preparing, prosecuting, and overseeing US, PCT, and foreign patent applications. Prior to that, he spent 25 years in private practice working in all areas of intellectual property law with Wolf Greenfield (Associate, Partner), Limbach & Limbach (Of Counsel), Synnestvedt & Lechner (Partner),
and Saul Ewing (Partner), where, in addition to patent prosecution and counselling, he was heavily engaged in trademark prosecution, patent opinion work, and intellectual property litigation in both federal court and the United States Patent and Trademark Office. Ted has prepared and/or prosecuted patent families for well over 1000 distinct inventions, with an em...

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  • Representative Transactions
    • American Dental Technologies, Inc. v. Kreativ, Inc, Civil Action No. C 97-374 (S.D.Texas 1997) (second chair representing plaintiff in patent infringement case concerning dental tool)
    • WKMX, Inc. v. The Coca Cola Company, Civil Action No. 01-D-573 S (M.D. Alabama 2001) (first chair representing plaintiff radio station WKMX in trademark infringement case concerning new Coca Cola energy beverage named KMX)
    • Beverage Marketing v. South Beach Beverage Corp., Civil Action No. 97-4137 (SDNY 2000) (second chair representing plaintiff in trademark infringement case regarding trade dress in the Arizona Iced Tea bottle)
    • Encomp, Inc. v. L-com, Inc., 999 F. Supp 264 (D. Conn, 1998) (first chair representing defendant in patent infringement case involving electrical connectors; case dismissed with prejudice; extremely rare case of defendant being awarded attorneys fees; successfully argued appeal before Court of Appeals for the Federal Circuit)
    • Althaus v. Oldroyd, Patent Interference No. 104,158 (BPAI 2000) (first chair in patent interference case representing Schick against Gillette concerning razors)
    • IMCS, Inc. v. DP Tech. Corp., 264 F. Supp. 2d 193 (E.D. Pa 2003) (first chair representing plaintiff in patent infringement case involving software for operating numerical-control machine tools and unfair competition counterclaims)
    • Gammino v. Southwestern Bell, Inc., Civil Action No. 3:05 CV 0850K (N.D. Texas 2005) (adjunct counsel representing plaintiff in patent infringement case concerning telephone software patent; first chaired Markman hearing)
    • Thermawave, Inc. v. Jenoptik GmbH, Civil Action No. C-94-2540 (N.D Cal. 1994) (second chair representing plaintiff in patent infringement case concerning thermal wave detection devices for testing of semiconductor devices and other applications)
    • Bell Sports, Inc. v. Graber Products, Inc., 20 USPQ2d 211 (WD Wisc. 1993) (second chair representing plaintiff in patent infringement case concerning bicycle racks)
    • R. Bard and DuPont v. Cordis Corp, Civil Action No. 89-0606-Z (D. Mass. 1989) (second chair representing plaintiff in patent infringement case concerning angioplasty balloons)
  • Publications

    • Top 20 Food and Drug Cases, 2009 & Cases to Watch, 2010
    Contributed Chapter on I41 v. Microsoft case
    April 1, 2012
    Food and Drug Law Institute
    • The State of the Granting of Injunctions in the Medical Field After eBay v. MercExchange
    June 30, 2010
    BNA Medical Devices Law & Industry Report
    • Understanding Recent Case Law on Enablement
    December 21, 2009 Law360
    • Top 20 Food and Drug Cases, 2009 & Cases to Watch, 2010
    Contributed Chapter on In Re Bilski case
    April 1, 2010
    Food and Drug Law Institute

 

 

Philadelphia

Ted Naccarella

Partner

[email protected]

+1.610.207.7641

Credentials

Admissions

Pennsylvania
United States Patent and Trademark Office

Education

Boston College Law School, JD, 1987
Lafayette College, BSEE, 1984

Prior Law Firm Experience

Interdigital Holdings, Inc.
Wolf Greenfield
Limbach & Limbach
Synnestvedt & Lechner

Saul Ewing

Practice Areas