Areas of Practice
Andrea Pacelli’s practice focuses on intellectual property litigation in the electrical, computer, telecommunications, and software fields.
Mr. Pacelli has represented both plaintiffs and defendants in matters covering a range of technologies such as integrated circuit design and manufacturing, wireless and broadband telecommunications, cloud computing and storage, and online advertising. He has first-hand experience in all phases of patent litigation, from patent selection and pre-filing investigations to written discovery, depositions, claim construction, summary judgment, trial, and appeal. Mr. Pacelli has represented clients in patent infringement actions before U.S. District Courts across the country, the U.S. Court of Appeals for the Federal Circuit, and the U.S. Supreme Court, as well as in proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO), the U.S. International Trade Commission (ITC), and in international arbitration.
In addition to litigation, Mr. Pacelli has represented clients in patent prosecution and reexamination before the USPTO and was involved in several patent cross-licensing negotiations for large semiconductor companies. He has also experience in preparing opinions of counsel, including freedom to operate and patent invalidity opinions, and IP due diligence projects in connection with corporate transactions.
Mr. Pacelli’s recent experience includes the following representations:
- Represented plaintiff Applications in Internet Time, LLC in patent infringement action against Salesforce, Inc. relating to cloud computing; argued claim construction and summary judgment.
- Represented patent owner ChanBond, LLC in responding to thirteen Inter Partes Review (IPR) petitions against the same patent family, including appeals to the U.S. Court of Appeals for the Federal Circuit and subsequent petitions for writ of certiorari to the U.S. Supreme Court.
- Advised Asia-based chipmaker in criminal case brought by U.S. Department of Justice alleging economic espionage.
- Represented semiconductor equipment manufacturer in international arbitration relating to licensing dispute against competitor, involving coordination with foreign counsel on worldwide analysis of patent families.
- Defended Asia-based chipmaker in defense of Section 337 ITC investigation brought by U.S. competitor alleging infringement of a patent relating to circuitry for high-speed memory access.
- Represented Europe-based chipmaker in Section 337 ITC investigation against U.S. competitor alleging infringement of five patents relating to semiconductor manufacturing and electrostatic discharge (ESD) protection circuitry.
Mr. Pacelli brings considerable technical depth to his law practice, having held technical and academic positions in the semiconductor field prior to his legal career. He worked as a device engineer in a semiconductor company, taught classes in analog and digital circuit design, was awarded the Best Paper Award at the 2002 IEEE/ACM International Conference on Computer Aided Design (ICCAD), and holds one U.S. Patent. In his free time he designs and builds embedded microcontroller systems.
Work Experience
Mr. Pacelli joined King & Wood Mallesons in 2020, after spending a decade practicing intellectual property law at major firms in New York City. Prior to his legal career he was an Assistant Professor of Electrical and Computer Engineering at Stony Brook University in Stony Brook, NY (2000–2004), a Postdoctoral Fellow at Bell Laboratories in Murray Hill, NJ (1999–2000), a Senior Device Engineer at Tower Semiconductor Ltd, Israel (1998–1999), and a Visiting Scholar at the Beckman Institute for Advanced Science and Technology at the University of Illinois at Urbana-Champaign (1994–1995).
He received his J.D. degree in 2008 from Fordham University School of Law, where he graduated magna cum laude, Order of the Coif, and served as the Senior Articles Editor for the Fordham Intellectual Property, Media and Entertainment Law Journal. He holds a Ph.D. degree in Electrical Engineering from the Polytechnic Institute of Milan, Italy (1998).
Mr. Pacelli is admitted to practice in New York and New Jersey and is a registered patent attorney with the USPTO. He is a Senior Member of the Institute of Electrical and Electronics Engineers (IEEE).
His working languages are English and Italian.
