Nicholas M. Cannella - Fitzpatrick, Cella, Harper & Scinto

Nicholas M. Cannella

Listed in Best Lawyers since 1999

Nicholas M. Cannella has thirty-seven years of experience as a litigator. Before joining Fitzpatrick in 1984, he served as law clerk to the Honorable Sol Wachtler, then one of the judges on New York State’s highest appellate court, and practiced in the litigation department of a large general practice firm, where he tried cases, both jury and nonjury, in the general commercial litigation field. Since joining Fitzpatrick, Mr. Cannella has been lead trial counsel in a variety of intellectual property cases, for clients such as Bristol-Myers Squibb, Canon Inc. and Canon U.S.A., Inc., Gilead Sciences, GlaxoSmithKline, Merck, The Walt Disney Company, Union Carbide and Upsher-Smith. He also has argued appeals before the United States Court of Appeals for the Federal Circuit and the Fifth Circuit. In addition, Mr. Cannella has been involved in all aspects of licensing and transactional work on behalf of the firm’s clients.

Mr. Cannella currently serves as a member of the firm’s Management Committee, and previously served as the firm’s Recruiting Partner and Managing Partner.

Mr. Cannella over the years has been recognized as an accomplished intellectual property litigator, receiving comments such as “a fearless advocate who has the confidence and experience to try any case, and win;”  “an extremely experienced trial lawyer who has a strong reputation in the electronics industry;” and as a trial lawyer “mentioned by clients for his overall depth of knowledge, trial experience, patience, diplomacy and flexibility,” who offers “thoughtful and creative strategies.”  As a result of comments like these, for the last 15 years Mr. Cannella has been listed in every edition of Best Lawyers in America and was named Best Lawyers 2012 New York City Patent Law Lawyer of the Year.  He also has been recognized in publications such as Practical Law Company’s Which Lawyer Life Sciences:  Intellectual Property 2005/2006, 2011 and 2012 editions and in the 2007 edition of Practical Law Company’s Which Lawyer Yearbook.  He also was listed as a Top New York City Intellectual Property Litigator in the 2006 through 2011 issues of Super Lawyers:  New York Metro Edition.  Mr. Cannella also was honored for his outstanding work in the patent category in Chambers USA 2008, 2009, 2010, 2011 and 2012 and also in Chambers Global 2010, 2011, 2012, as well as the International Who’s Who of Patent Lawyers, 2011.  He was also recognized as a leading attorney in LMG Life Sciences 2012.

Fordham UniversityBA 1972St. John's UniversityJ.D. 1975
Appellate Division, First Dep't, Departmental Disciplinary CommitteeThe Legal Aid SocietySt. John's University School of Law Alumni AssociationSt. John's University School of LawWilliam C. Conner Inn of Court

Case History

In re Certain Toner Cartridges and Components Thereof U.S. International Trade Commission, 2011Fitzpatrick, on behalf of clients Canon Inc., Canon U.S.A., Inc. 
and Canon Virginia, Inc., initiated an Investigation in the U.S.
International Trade Commission against some twenty Chinese
and U.S. Respondents, including several Ninestar companies and
several retailers of Ninestar products, seeking to exclude the
importation and sale of laser beam printer toner cartridges compatible
with Canon and HP printers, on the grounds that those cartridges
infringed two of Canon's patents. Fitzpatrick also brought a
concurrent patent infringement action on behalf of Canon Inc.
against those entities in the U.S. District Court for the Southern
District of New York. After months of active litigation in the fast-
paced ITC, the Commission issued a Consent Order prohibiting the
importation and sale of the accused products by all Respondents. The
Southern District thereafter issued a Consent Judgment and Permanent
Injunction prohibiting those parties from making, using and selling the
accused products.

Kirsch v. Canon USA, Inc. et al. E. D. MI 2009 — After years of protracted litigation between Kirsch et al. and Canon U.S.A.,
U.S. District Court Judge Hood held plaintiffs’ patent, on summary judgment,
invalid, and the case against Canon U.S.A. was dismissed on collateral estoppel
grounds. Kirsch filed separate actions against Canon and several other defendants
alleging infringement of the Kirsch patent disclosing an “information station” which
enabled a computer to be connected to an off-the-shelf facsimile machine and a
telephone line to enable the facsimile machine to function as a printer for the
computer and, alternatively, to enable the computer to send and receive facsimiles.
Fitzpatrick attorneys obtained two favorable summary judgment decisions on issues
of willful infringement and convoyed sales damages on behalf of Canon U.S.A. In addition,
in cooperation with counsel for Xerox Corporation in a companion case involving the
same patent, Fitzpatrick attorneys assisted in obtaining a third summary judgment
finding the Kirsch patent invalid. The court subsequently denied Kirsch’s motion to
reconsider the summary judgment decision of invalidity and held that Kirsch was
collaterally estopped from continuing in its action against Canon. Accordingly, the
Court dismissed Kirsch’s suit against Canon with prejudice and entered judgment in
Canon’s favor.
In re: Halftone Color Separations ('809) Patent Litigation C.D. CA 2009 — On July 28, 2009, in a case in which Canon U.S.A. was represented by
attorneys from Fitzpatrick, U.S. District Court Judge Cormac Carney
entered an order dismissing with prejudice all claims against Canon U.S.A.
in this multi-district litigation. The order was entered pursuant to a stipulation,
which the plaintiffs agreed to at the conclusion of claim construction briefing
and following supervised testing of the accused products.
Canon Inc v. GCC International Limited, et al. Fed. Cir. 2007 — On November 16, 2007, the Court of Appeals for the Federal Circuit affirmed the
decision of the District Court for the Southern District of New York granting a
preliminary injunction motion brought by Fitzpatrick attorneys on behalf of Canon
Inc.  The preliminary injunction, which was originally obtained on August 29, 2006,
requires the defendants to stop activity that infringes Canon's patent on certain
toner cartridges for use in laser printers and fax machines.  In affirming the district
court's decision, the Federal Circuit held that Canon was likely to prevail on the
merits of the case and found that the balance of the harms favored Canon.  The
appeals cout also held that defendants' appeal of the district court's denial of their
motion for summary judgment was not an appealable order.
Nano-Proprietary, Inc. v. Canon Inc. 5th Cir. 2008 — A district court in Texas found that Fitzpatrick client Canon breached a patent
license agreement it had entered into with plaintiff, and terminated Canon's license
under patents on nano-technology related to flat-panel television displays.  A
jury trial followed on plaintiff's claim for damages, and Fitzpatrick obtained a
verdict that no damages had been suffered.  On appeal, the Court of Appeals for
the Fifth Circuit has ruled that "even assuming that Canon breached" (a decision
it declined to affirm), the district court was incorrect in its decision to terminate,
and reinstated Canon's license. The Fifth Circuit also ruled that Canon's subsidary
SED Inc., which it formed to develop and manufacture flat panels, is entitled to
the benefit of the license.  Finally, the Fifth Circuit affirmed all aspects of the
district court's decisions relevant to plaintiff's cross-appeal, including the district
court's rulings at trial and dismissal of plaintiff's tortuous interference claim on the

Office Location

1290 Avenue of the Americas
New York, NY 10104-3800
United States

Lawyer of the Year Awards

2012 Lawyer of the Year in Patent Law of the New York City Metro Area
Nicholas M. Cannella has earned a Lawyer of the Year award for 2012!

Practice Areas

Litigation - Patent
Patent Law
Trademark Law

Other Information

Gender: Male