Francisco A. Villegas

Partner

fvillegas@villegascefo.com | 646.844.1071

  • Gaming Machine Manufacturer Patent Dispute

    Defended gaming machine manufacturer against three software patents concerning multiplayer interactive video gaming. Obtained jury verdicts of invalidity despite the patents having been confirmed multiple times in reexamination before the Patent Office.

    Defense of Auto Manufacturers in Nonpracticing Entity Dispute

    Defended several domestic and foreign automobile manufacturers against a patent licensing entity in a case concerning online sales methods. The matter was settled on favorable terms.

    Favorable Settlement for Patent Client in Social Media Case

    Served as enforcement counsel to an institutional patent client in U.S. District Court for the District of Delaware against a leading social media site involving user privacy technology. The matter was settled early in litigation and on favorable terms.

    Israeli Streaming Company Succeeds in High-Stakes Litigation

    Enforced a foundational media streaming patent in the Northern District of California against one of the largest software companies in the world, leading to a positive business resolution.

    Aerospace Patent Matter Ends in Success

    Represented an international fire suppression manufacturer against an infringing aerospace company and a major industrial conglomerate in a patent infringement action concerning the use of nitrogen to meet FAA fuel tank inerting requirements. The case settled on favorable terms.

    Successful Representation in VoIP Matter

    Represented a small institutional patent client in litigation against an international telecommunications wholesaler concerning VoIP technology. The case settled on favorable terms.

    Summary Judgement for International Manufacturer in Patent Litigation

    Defended international manufacturer in patent litigation concerning a traction system for use in industrial equipment. Obtained summary judgment of noninfringement.

    Successful Outcome for Canadian Industrial Automation Company

    Enforced a foreign industrial automation company’s patent against numerous manufacturing systems integrators in an infringement action concerning IoT scaling temperatures probes. The case settled on favorable terms.

    $8 Million Jury Verdict for Medical Device Company

    Represented medical device company in patent jury trial concerning cardiac stents resulting in an $8 million jury verdict.

    Defense of Major Retailer Against Patent Licensing Entity

    Defended major retailer against a patent licensing entity in a dispute concerning debit and gift card transaction technology. Settled on favorable terms following discussions of invalidating prior art.

    Telecom Carrier in VoIP Matter Prevails Against Non practicing Entity

    Defended in the Eastern District of Texas a leading telecom carrier and its prime contractor against a nonpracticing entity in a matter concerning VoIP user-adjustable features. The case settled on favorable terms.

    Medical Device Company Embroiled in FDA, Patent Litigation Succeeds in Litigation-Driven IPR

    Strategy Served as defense counsel to a medical device company in FDA and patent matters regarding a fluid delivery system. One of the few cases before the Hon. R. Gilstrap in U.S. District Court for the Eastern District of Texas to be stayed pending inter partes review.

    International IoT Company Obtains Early Dismissal of Suit

    Served as defense counsel to an IoT company in matter in U.S. District Court for the Eastern District of Texas involving technologies such as accelerometers, piezo-resistive films and magnetic field sensors.

    Counsel to Pharma Company in Diabetes Drug Patent Litigation

    Counseled a pharmaceutical company in an action before U.S. District Court for the Eastern District of North Carolina concerning its IP rights to an SGLT2 diabetes drug.

  • May 16, 2016 Three Key Implications of the Defend Trade Secrets Act

    January 20, 2015 Initial Case Strategy Should Account for Jurisdictional Variances in Damages New York Law Journal

    September 19, 2014 No Assumptions Patent Lawyer Magazine

    September 10, 2013 IP: Patent Litigation E-Discovery Procedures Should Be Evaluated Early in the Case Inside Counsel

    July 30, 2013 Uneven Playing Field for Defendants in Patent Cases Inside Counsel

  • Legal and Ethical Issues Surrounding the Use of Artificial Intelligence for Data Innovation, Privacy and Security When: April 27, 2022 Location: Online Event People: Francisco A. Villegas, F. Scott Galt, CIPP/E

    Artificial Intelligence for Lawyers When: June 5, 2018 People: Francisco A. Villegas

    Introduction to Intellectual Property When: June 11, 2015 Location: Camden CoLab People: Francisco A. Villegas

    Alice v. CLS Bank: An In-House Counsel Perspective When: October 29, 2014 Location: PLI People: Francisco A. Villegas

    Intellectual Property Rights for Start-Ups When: October 14, 2014 Location: YLE Media Startup Accelerator Powered by Nestholma, Finland People: Francisco A. Villegas

    Electronic Discovery in United States District Court Litigation When: May 27, 2014 Location: Korea People: Francisco A. Villegas

    Trends in U.S. Patent Damages When: May 1, 2014 Location: Korea People: Francisco A. Villegas

    Privacy Law in the United States and Europe When: January 24, 2011 Location: Korea People: Francisco A. Villegas

Representing domestic and international companies, Francisco advises on IP litigation and transactional matters involving a wide range of subjects. He has extensive experience in matters related to media streaming, aerospace, artificial intelligence, online gaming, heavy machinery, medical devices, telecom, social media, pharmaceuticals and the Internet of Things.

His patent experience includes litigation assertion and defense, portfolio development, asset valuation, licensing, opinions (validity, infringement and freedom-to-operate clearances) and post grant proceedings including inter partes review, reissues and ex parte reexaminations. In addition to his patent work, Francisco regularly represents clients in domestic and international trademark matters.

On the transactional side, Francisco advises clients on mergers and acquisitions, deal sourcing, joint ventures, product development, SaaS, IP monetization, privacy and venture capital.

Francisco’s practice also includes early stage companies. He represents startups, incubators, innovation labs and investors that seek to exploit new technologies or apply mature products and services in new ways.

Additionally, Fortune 50 companies have frequently requested that Francisco present on topics at the intersection of law and science, such as emerging technologies, ethics and artificial intelligence and general trends in IP law.

Education

- Cornell Law School (J.D., 1999) - Stanford University (M.S., 1996)

  • Mechanical Engineering

- Stanford University (B.S.B.A., 1994)

  • Mechanical Engineering

  • Political Science

Admissions

- New York - California - Connecticut - District of Columbia - U.S. District Court, Southern District of New York - U.S. District Court, Eastern District of New York - U.S. District Court, Northern District of California - U.S. District Court, Central District of California - U.S. District Court, Eastern District of California - U.S. Court of Appeals, Federal Circuit

Professional Activities

- American Bar Association - New York Intellectual Property Law Association - Institute of Electrical and Electronics Engineers

Accolades

- Chambers USA: America’s Leading Lawyers in Business for Intellectual Property: Patent (2014-2015) - IAM Patent 1000: The World's Leading Patent Professionals (2015-present) - New York Metro Super Lawyers®, Intellectual Property: Litigation (2014-present)