Dr. Lucantoni has served as an expert witness and consultant for over 35 patent infringement and arbitration cases in the Telecom industry. He has been deposed over 30 times and has testified in Federal District Court at a Markman claim construction hearing, a trial before jury and for 4 days to a 3-judge panel at the American Arbitration Association.
Dr. Lucantoni has written expert reports on patent infringement, validity, written description and enablement and many declarations. He has helped with various claim construction issues.
Type of Matter: Patent Infringement
Law Firm: Desmarais, LLP, Washington, DC
Case Name: IPC Systems Inc. v. Cloud9 Technologies, LLC.
Services Provided: Nov 2017 – Present (engaged on behalf of Cloud9 Technologies) Wrote declaration in support of a Petition for a Covered Business Method Patent Review in the area of software trader turrets and voice over IP
Disposition: Ongoing
Type of Matter: Covered Business Method & Inter Partes Review
Law Firm: Hunton & Williams, LLP, Washington, DC
Case Name: Cloud9 Technologies, LLC. v. IPC Systems Inc.
Services Provided: Nov 2017 – Present (engaged on behalf of Cloud9 Technologies) Wrote declarations in support of a Petition for a Covered Business Method Patent Review & an Inter Partes Review in the area of software trader turrets and voice over IP
Disposition: Denied
Type of Matter: Patent Infringement
Law Firm: Pepper Hamilton LLP, Boston, MA
Case Name: BroadSoft Inc. v. Callwave Communications Inc, et al.
Services Provided: Aug 2014 – Present (engaged on behalf of CallWaveCommunications) Participated in claim construction, wrote infringement and validity reports on a case involving VoIP; was deposed
Disposition: Ongoing
Type of Matter: Patent Infringement
Law Firm: Pepper Hamilton LLP, Boston, MA
Case Name: Callwave Communications v. AT&T, AT&T Mobility and Google Inc, et al.
Services Provided: Aug 2014 – Present (engaged on behalf of CallWaveCommunications) Participated in claim construction, wrote infringement and validity reports on a case involving VoIP; was deposed
Disposition: Ongoing
Type of Matter: Patent Infringement
Law Firm: Cooley LLP, Reston, VA
Case Name: Ronald A. Katz Technology Licensing L.P. v. Federal Express, Inc., et al.
Services Provided: Nov 2007 – Present (engaged on behalf of RAKTL) Wrote an expert report on infringement by FedEx; was deposed
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Mishcon de Reya LLP, New York, NY
Case Name: TLI Communications, LLC v. Facebook, Inc., et al.
Services Provided: Oct 2014 – Feb 2015 (engaged on behalf of TLI Communications) Participated in claim construction and preliminary infringement analysis
Disposition: Case dismissed
Type of Matter: Patent Infringement
Law Firm: Bingham McCutchen LLP, Washington, DC
Case Name: Straight Path IP Group, Inc. v. Bandwidth.com Inc., et al.
Services Provided: Dec 2013 – Mar 2014 (engaged on behalf of Vocalocity) Wrote infringement and invalidity reports for SIP VoIP; was deposed.
Disposition: Settled
Type of Matter: Class Action Suit
Law Firm: Mathews Law Group, Arcadia, CA
Case Name: Brian Connelly, Mary Alicia Sikes, and Keith Merritt, on behalf of themselves and all others similarly situated, v. Hilton Grand Vacations Company, LLC
Services Provided: Jun 2013 – Dec 2013 (engaged on behalf of Plaintiffs) Wrote declaration describing practices in violation of the Telephone Consumer Protection Act (TCPA); was deposed.
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: DiNovo, Price, Ellwanger & Hardy, Austin, TX
Case Name: LivePerson, Inc, v. Pragmatus Telecom, Inc.
Services Provided: Jan 2013 – Jun 2013 (engaged on behalf of Pragmatus Telecom, Inc.) Wrote declaration in support of claim construction
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Thompson Knight, Dallas, TX
Case Name: QPSX Developments 5 Pty LTD. v. Ciena Corporation, et al.
Services Provided: Nov 2010 – May 2011 (engaged on behalf of Ericsson) Helped with claim construction issues
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Hogan Lovells, New York, NY
Case Name: Automated Transactions, LLC v. IYG Holding Co., 7-Eleven, Inc., Vcom Financial, Inc., and Cardtronics USA, Inc.
Services Provided: Feb 2010 – Nov 2010 (engaged on behalf of IYG Holding, Co., et. al.) Wrote non-infringement and invalidity expert reports and two declarations
Disposition: Settled in favor of IYG Holdings, Co. et al. by Summary Judgment
Type of Matter: Patent Infringement
Law Firm: Cooley LLP, Reston, VA
Case Name: Ronald A. Katz Technology Licensing L.P. v. Macy’s
Services Provided: Mar 2008 – Jan 2014 (engaged on behalf of RAKTL) Wrote an expert report on infringement by Macy’s; was deposed
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Cooley LLP, Reston, VA
Case Name: Ronald A. Katz Technology Licensing L.P. v. Citizens Communications
Services Provided: Mar 2008 – Dec 2008 (engaged on behalf of RAKTL) Wrote an expert report on infringement by Citizens Communications; was deposed
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Cooley LLP, Reston, VA
Case Name: Ronald A. Katz Technology Licensing L.P. v. Cincinnati Bell
Services Provided: Mar 2008 – Dec 2008 (engaged on behalf of RAKTL) Wrote an expert report on infringement by Cincinnati Bell; was deposed
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Cooley LLP, Reston, VA
Case Name: Ronald A. Katz Technology Licensing L.P. v. Echostar Satellite LLC
Services Provided: Mar 2008 – Nov 2014 (engaged on behalf of RAKTL) Wrote an expert report on infringement by Echostar; was deposed
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Cooley LLP, Reston, VA
Case Name: Ronald A. Katz Technology Licensing L.P. v. Teligence
Services Provided: Mar 2008 – May 2014 (engaged on behalf of RAKTL) Wrote an expert report on infringement by Teligence; was deposed
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Cooley LLP, Reston, VA
Case Name: Ronald A. Katz Technology Licensing L.P. v. Citizens Financial
Services Provided: Mar 2008 – May 2014 (engaged on behalf of RAKTL) Wrote an expert report on infringement by Citizens Financial; was deposed
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Cooley LLP, Reston, VA
Case Name: Ronald A. Katz Technology Licensing L.P. v. Cox Communications, Inc., et al.
Services Provided: Nov 2007 – Jan 2014 (engaged on behalf of RAKTL) Wrote an expert report on infringement by Cox Communications; was deposed
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Cooley LLP, Reston, VA
Case Name: Ronald A. Katz Technology Licensing L.P. v. Whirlpool, Inc., et al.
Services Provided: Nov 2007 – Jun 2008 (engaged on behalf of RAKTL) Wrote an expert report on infringement by Whirlpool
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Cooley LLP, Reston, VA
Case Name: Ronald A. Katz Technology Licensing L.P. v. Aetna, Inc., et al.
Services Provided: Nov 2007 – Aug 2008 (engaged on behalf of RAKTL) Wrote an expert reports on infringement by Aetna, Caremark & Kroger
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Cooley LLP, Reston, VA
Case Name: Ronald A. Katz Technology Licensing L.P. v. Humana, Inc., et al.
Services Provided: Nov 2007 – Mar 2009 (engaged on behalf of RAKTL) Wrote expert reports on infringement by Humana and Humana Military Health Systems; was deposed
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Cooley LLP, Reston, VA
Case Name: Ronald A. Katz Technology Licensing L.P. v. UPS
Services Provided: Nov 2007 – Sept 2009 (engaged on behalf of RAKTL) Wrote an expert report on infringement by UPS; was deposed
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Cooley LLP, Reston, VA
Case Name: Ronald A. Katz Technology Licensing L.P. v. Amtrak, Inc., et al.
Services Provided: Nov 2007 – May 2008 (engaged on behalf of RAKTL) Wrote expert report on infringement by Amtrak
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Cooley LLP, Reston, VA
Case Name: Ronald A. Katz Technology Licensing L.P. v. General Motors Corp., et al.
Services Provided: Nov 2007 – Oct 2007 (engaged on behalf of RAKTL) Wrote an expert report on infringement by General Motors; was deposed
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Cooley LLP, Reston, VA
Case Name: Ronald A. Katz Technology Licensing L.P. v. U. S. Bancorp, et al.
Services Provided: Nov 2007 – Apr 2014 (engaged on behalf of RAKTL) Wrote an expert report on infringement by U. S. Bank; was deposed
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Cooley LLP, Reston, VA
Case Name: Ronald A. Katz Technology Licensing L.P. v. American Airlines, Inc., et al.
Services Provided: Nov 2007 – Feb 2014 (engaged on behalf of RAKTL) Wrote an expert report on infringement by American Airlines; was deposed
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Cooley LLP, Reston, VA
Case Name: Ronald A. Katz Technology Licensing L.P. v. Earthlink, Inc., et al.
Services Provided: Nov 2007 – Jan 2014 (engaged on behalf of RAKTL) Wrote an expert report on infringement by Earthlink; was deposed
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Cooley LLP, Reston, VA
Case Name: Ronald A. Katz Technology Licensing L.P. v. DirecTV Group, et al.
Services Provided: Nov 2007 – Jan 2014 (engaged on behalf of RAKTL) Wrote an expert report on infringement by DirecTV; was deposed
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: King & Spalding LLP, New York, NY
Case Name: QPSX Developments 5 Pty Ltd. v. Juniper Networks, Inc., et al.
Services Provided: January 2006 – April 2007 (engaged on behalf of Alcatel) Wrote an expert report on non-infringement
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Maher, Guiley & Maher, P.A., Winter Park, FL & Allen, Dyer, Doppelt, Milbrath & Gilchrist, P.A., Orlando, FL
Case Name: 800 Adept, Inc. v. Murex Securities, LTD., et al.
Services Provided: October 2005 – October 2006 (Engaged on behalf of 800 Adept) Wrote expert reports on infringement for patents involving geographic routing of 800 calls. Testified at deposition and as a direct and rebuttal witness at the (jury) trial.
Disposition: Jury verdict in favor of plaintiff (800 Adept); found all 800 Adept asserted claims infringed; found all Murex asserted claims non-infringed.
Read the Jury Verdict here.
This verdict was listed as number 76 in the Top 100 Verdicts of 2006. See here.
Type of Matter: Patent Infringement
Law Firm: McKool Smith, P.C., Austin, TX
Case Name: Ciena Corporation v. Nortel Networks Limited
Services Provided: September 2005 – July 2006 (Engaged on behalf of Nortel) Wrote expert reports on non-infringement and validity and was deposed on patents involving inverse multiplexing over ATM (IMA).
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: McDonnell Boehnen Hulbert & Berghoff LLP, Chicago, IL
Case Name: SmartCall Licensing Inc. v. Sprint Spectrum LP.
Services Provided: August 2005 – September 2005 (Engaged on behalf of Sprint) Participated in claim construction activities involving paging network patents.
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Cooley LLP, Reston, VA
Case Name: Ronald A. Katz Technology Licensing L.P. v. Citibank, N.A., et al.
Services Provided: May 2005 – July 2008 (engaged on behalf of RAKTL) Wrote an expert report on infringement by T-Mobile
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Gibbons, Del Deo, Dolan, Griffinger & Vecchione, Newark, NJ
Case Name: Acceris Communications Technologies, Inc. v. ITXC Corp.
Services Provided: October 2004 – June 2005 (Engaged on behalf of Acceris) Participated in claim construction activities involving a voice-over-IP patent
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Fish & Neave, New York, NY
Case Name: Verizon v. Katz
Services Provided: November 2002 – July 2004. (Engaged on behalf of Katz.) Serving as an expert witness involving telecommunications call center technology; Completed expert reports related to patent infringement, enablement and written description. Testified at several depositions.
Disposition: Settled
Type of Matter: Telecom Arbitration (Breach of Contract)
Law Firm: Law Offices of Francis X. Markey, Washington, DC
Case Name: International Telecom, Inc. d/b/a LC Communications v. Generadora Electrica del Oriente, S.A., et al., 00-CIV 8695 WHP
Services Provided: From August 2001 to December 2001. (On behalf of International Telecom, Inc.) Provide consulting as an expert witness and modeling in a telecommunications arbitration case.
Disposition: Judgment in favor of International Telecom, Inc.
Type of Matter: Patent Infringement
Law Firm: Reed Smith, LLP, New York, NY
Case Name: Acterna (Telecommunications Techniques Corporation) v. Adtech
Services Provided: From August 2001 to October 2001, served as an expert witness involving telecommunications networking monitoring technology.
Disposition: Settled
Type of Matter: Telecom Arbitration (Breach of Contract)
Law Firm: Law Offices of Francis X. Markey, Washington, DC
Case Name: Confidential
Services Provided: From August 2001 to 2006. (On behalf of International Telecom, Inc.) Provide consulting (as an expert witness) and modeling in a telecommunications arbitration case. Was deposed and testified for over four days at trial at the American Arbitration Association.
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Kenyon & Kenyon, New York, NY
Case Name: Alcatel Internetworking, Inc. v. Cisco Systems, Inc.
Services Provided: September 2000 – March 2004. (Engaged on behalf of Alcatel.) Serving as an expert witness involving telecommunications networking technology; Testified at Federal District Court at the Markman claim construction hearing in the Central District of California at Los Angeles, CA. Completed expert reports related to patent infringement and patent invalidity and the subsequent depositions.
Disposition: Settled
Type of Matter: Patent Infringement
Law Firm: Kirkland & Ellis, New York, NY
Case Name: Lucent Technologies v. Newbridge Networks
Services Provided: From October 1998 to November 1999, served as a fact witness for his Lucent patents involving telecommunications congestion control technologies that have since been incorporated into the ATM standards.
Disposition: Decided in favor of Lucent at trial
Type of Matter: Patent Infringement
Law Firm: Kirkland & Ellis, New York, NY
Case Name: Lucent Technologies v. Extreme Networks, Inc.
Services Provided: Deposed as a fact witness for his Lucent patents involving telecommunications congestion control technologies that have since been incorporated into the ATM standards.
Disposition: Ongoing
Type of Matter: Patent Infringement
Law Firm: Kirkland & Ellis, New York, NY
Case Name: Lucent Technologies v. Foundry Networks, Inc.
Services Provided: Deposed as a fact witness for his Lucent patents involving telecommunications congestion control technologies that have since been incorporated into the ATM standards.
Disposition: Ongoing
Below are partners who have defended Dr. Lucantoni at either depositions or trials.
John Desmarais, Desmarais, LLP, (212) 351-3420
Robert Appleby , Kirkland & Ellis, (212) 446-4762
Robert Whitman, King & Spalding,(212) 556-2310
Robert Perry, King & Spalding, (212) 827-4350
James Hopenfeld, HSRS, (202) 656-5097
Stuart Sinder, Kenyon & Kenyon, (212) 908-6151
Geoff Smith, McKool Smith, (512) 692-8728
Peter Ayers, McKool Smith, (512) 692-8703
Brian Gilchrist, Allen, Dyer, Doppelt, Milbrath &Gilchrist, (407) 841-2330
Stephen Milbrath, Allen, Dyer, Doppelt, Milbrath &Gilchrist, (407) 841-2330
Steven Maher, Maher, Guiley & Maher, (407) 648-8964
Frank Pietrantonio, Cooley Godward Kronish, (703) 456-8467
Kent Walker, Lewis | Kohn, (858) 436-1333
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