Zachary P. Piccolomini

Overview

Zachary Piccolomini counsels clients in a wide variety of intellectual property matters, including patent and trademark portfolio development, IP due diligence, post-grant proceedings, IP litigation, and related issues.

Zachary represents clients that range in size from start-up companies to large international corporations. Practicing for over 15 years, he tailors his counseling according to the particular situations and needs of each client. Zachary represents clients in the computer hardware, computer software, and mechanical device fields. In particular, he has experience with technologies such as machine vision, image processing, video compression (including H.263-H.266, and related standards), video games, virtual reality, data storage, semiconductor fabrication, memory devices, medical devices, power generators, 3D printing, and cable and wireless technologies (including DOCSIS, 3G-5G, and related standards).

Zachary has significant experience with various post-grant proceedings, including inter partes review (IPR) proceedings, reissue proceedings, and ex parte and inter partes reexamination proceedings before the Patent Trial and Appeal Board, and related appeals to the United States Court of Appeals for the Federal Court. Additionally, Zachary’s experience with intellectual property litigation spans across pre-suit investigation to pleadings, depositions, motion practice, trials and appeals. He has experience in a variety of district courts, the International Trade Commission (ITC), and the United States Court of Appeals for the Federal Circuit.

Prior to joining Wolf Greenfield, Zachary served as Counsel in the intellectual property group at an Am Law 50 law firm, where he counseled clients regarding patent portfolio development, post-grant proceedings, patent litigation matters, due diligences, and freedom-to-operate searches.

Before beginning his legal career, Zachary was an engineer in the Air and Missile Defense Technology Division of the Massachusetts Institute of Technology Lincoln Laboratory. While at MIT/LL, he was involved in various aspects of radar system engineering, including real-time systems, distributed data acquisition, target discrimination and algorithm development, as well as simulation design, integration, analysis and testing for Ballistic Missile Defense Systems, CBand land-based radars and Aegis SPY-1 phased array radars.

Experience

• Worked with technology companies to strategically develop commercially valuable patent portfolios, including preparing and prosecuting patent applications, as well as leading teams to develop and prosecute larger patent portfolios.
• Represented a major content delivery network provider in various district court proceedings, including developing substantive positions for certain asserted patents, leading expert reports and related discovery, and drafting inter partes review petitions for those patents.
• Represented a leading semiconductor manufacturer and successfully invalidated all challenged claims for three inter partes reviews of patents involving wireless transmission technology. Briefed the resulting Federal Circuit appeals of the inter partes review decisions.
• Represented a major smartphone manufacturer in related cases in the Northern District of California, the Eastern District of Texas, and the International Trade Commission that involved patents directed to cellular technologies, and secured a favorable settlement.
• Represented a global car manufacturer in a four patent trial related to collision avoidance and infotainment technology in the Western District of Washington. Following a three-week trial, the jury found in favor of the client and also found the plaintiffs and their CEO had misappropriated the client’s trade secrets.
• Obtained covenant not to sue in declaratory judgment action brought by a networking equipment supplier, resulting in summary judgment of exhaustion for the supplier’s customers.
• Obtained summary judgment of non-infringement and invalidity for a leading semiconductor manufacturer for patents related to wireless transmission technology.
• Defended a major telecommunications company against allegations of infringement of a patent related to WiFi access points and secured a favorable settlement.

Activities

Zachary is a member of the Boston Bar Association and Boston Intellectual Property Law Association. He is also a frequent guest lecturer on IP topics at Rensselaer Polytechnic Institute, Worcester Polytechnic Institute and Northeastern University.

Recognition

• Repeatedly named to The Best Lawyers in America®