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Finnegan
Nicholas A. Cerulli
Partner
More
vCard
  • 901 New York Avenue, NW
  • Washington, DC 20001-4413
+1 202 408 4248
nicholas.cerulli@finnegan.com nicholas.cerulli@finnegan.com

Nicholas A. Cerulli

Partner

  • +1 202 408 4248 +1 202 408 4248
  • nicholas.cerulli@finnegan.com nicholas.cerulli@finnegan.com
  • 901 New York Avenue, NW
  • Washington, DC 20001-4413
  • vCard
Nick Cerulli has a diverse patent practice that includes client counseling, prosecution, litigation before U.S. district courts, and post-grant proceedings at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). Nick represents clients in matters involving a wide range of mechanical and electrical technologies.

Nick manages multiple large international patent portfolios and supervises teams of attorneys, patent agents, and technical specialists to counsel clients on various types of patent matters. He also works closely with clients on portfolio development and strategic prosecution to obtain high profile patents, including standard essential patents (SEPs). Over the years, Nick has prepared and prosecuted hundreds of utility and design patent applications involving a wide range of mechanical and electrical technologies. In particular, he has been involved with patent applications related to hybrid and electric vehicle technologies, power generation and management, hydraulic systems, industrial manufacturing, medical devices, consumer products, textiles, food packaging and processing, wireless communications, cellular technologies (LTE, 3G, 4G, and 5G), fiber optics, user interfaces, facial recognition, and various other computer software technologies. Nick also provides opinions of counsel on claim construction, infringement, and validity.

In his contentious practice, Nick assists clients in all phases of litigation before U.S. district courts, from pre-suit investigations through trial and appeal. He has examined witnesses at trial, drafted and argued motions in court, taken and defended several fact and expert depositions, prepared validity and infringement contentions, managed complex discovery, and prepared initial pleadings and other briefings.

Nick's PTAB experience includes representing both petitioners and patent owners in all phases of inter partes review (IPR) proceedings. He has drafted several successful IPR petitions and patent owner responses, taken and defended expert depositions, and argued before the Board at oral hearings.

Nick also maintains a pro bono practice, including representing veterans in appeals to the U.S. Court of Appeals for Veterans Claims. He has been recognized on the Capital Pro Bono High Honor Roll.

Et Cetera

  • University of Maryland President's Scholarship, 2008-2012.
  • Selected as a University of Maryland Terrapin Club "30 Under 30," 2020.

Experience

Georgetown Rail Equipment Company v. Tetra Tech Canada, Inc.

Finnegan successfully defended Tetra Tech Canada Inc. (“Tetra Tech”) in a district court action brought by Georgetown Rail Equipment Company (“GREX”), asserting three patents against certain railroad track inspection systems allegedly sold by Tetra Tech. Finnegan filed several inter partes reviews (“IPRs”) against the asserted patents, and leveraged favorable institution decisions to stay the district court case. At the PTAB, Finnegan secured final written decisions in the IPRs, finding all challenged claims unpatentable, leading to the subsequent dismissal of the district court case.

6:18-cv-00377, E.D. Tex., Judge Schroeder
IPR2019-00619, -00620, -00662, -01409, -01581, PTAB, Judges Wood, Lorin, Kalan

Zimmer Surgical, Inc. et al. v. Stryker Corporation et al.

Represented patent owner Zimmer in litigation involving surgical waste management and defended Zimmer against a counterclaim. The case settled favorably right before trial.

1:16-cv-00679, D. Del., Judges Andrews, Thynge

Toyota Motor Corporation v. General Electric Co./GE Hybrid Technologies, LLC.

Successfully represented petitioner in a series of inter partes review challenges to hybrid vehicle battery technology, securing final written decisions finding all of the challenged claims unpatentable for one patent, and most of the challenged claims unpatentable for another patent.

IPR2019-00011, -00012, -00014, PTAB

Pavemetrics Systems., Inc. v. Tetra Tech, Inc.

Represented Tetra Tech Inc. in a patent infringement suit related to computer vision-based railway track inspection.

2:21-cv-01289-MCS-MAA, C.D. Cal., Judge Scarsi

Insights

Articles

Trending at the PTAB: Shifts in Parallel Proceedings Strategy

Trending at the PTAB: Shifts in Parallel Proceedings Strategy Trending at the PTAB: Shifts in Parallel Proceedings Strategy

June 30, 2025

Law360

Articles

Trending at the PTAB: Obviousness in Director Reviews

Trending at the PTAB: Obviousness in Director Reviews Trending at the PTAB: Obviousness in Director Reviews

September 6, 2024

Law360

Articles

Trending at The PTAB: Fintiv Is Alive, But With Way Less Zip

Trending at The PTAB: Fintiv Is Alive, But With Way Less Zip Trending at The PTAB: Fintiv Is Alive, But With Way Less Zip

March 3, 2023

Law360

News

Award/Ranking

60 Finnegan Attorneys Named to 2023 Capital Pro Bono Honor Roll

60 Finnegan Attorneys Named to 2023 Capital Pro Bono Honor Roll

May 15, 2024

Press Release

Finnegan Announces 2024 Partner Class Finnegan Announces 2024 Partner Class

January 2, 2024

Award/Ranking

54 Finnegan Attorneys Named to 2022 Capital Pro Bono Honor Roll 54 Finnegan Attorneys Named to 2022 Capital Pro Bono Honor Roll

July 21, 2023

Professional Activities

  • American Intellectual Property Law Association
  • PTAB Bar Association
Admissions and Education

Admissions

  • U.S. Patent and Trademark Office
  • District of Columbia
  • Virginia
  • U.S. Court of Appeals, Federal Circuit

Education

George Washington University Law School
J.D., 2017
University of Maryland
B.S., Mechanical Engineering, 2012

Nicholas's Practices

Diligence, Licensing, and Opinions
Opinions and Counseling
Standard Essential Patents (SEPs)
Global IP Enforcement, Litigation, and Trials
Design Rights
Patent Litigation and Trials
Standard Essential Patents (SEPs)
Patent Office Invalidation Proceedings
PTAB Invalidation Proceedings: IPR and PGR
Prosecution and Portfolio Management
Design Rights
Patent Drafting and Prosecution
Standard Essential Patents (SEPs)
Standard Essential Patents (SEPs)

Nicholas's Industries

AI, Electronics, and Information Technology
Augmented Reality/Virtual Reality (AR/VR)
Electrical and Computer Technology
Chemicals, Industrials, and Materials
Manufacturing
Textiles
Consumer Goods and Services
Consumer Products
Energy
Clean Energy and Renewables
Life Sciences
Medical Device and Diagnostics
Transportation and Logistics
Automotive and Smart Mobility Tech

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