Victor M. Felix
Partner
Admissions
California;
Nevada;
US Patent & Trademark Office
Languages
Spanish
Address
525 B Street, Suite 2200, San Diego, CA 92101
Office Tel.
619.515.3229
Fax
619.744.5409
Overview
Victor represents clients in patent, trademark, copyright and trade secrets disputes and infringement litigation. His practice focuses on representing business owners, institutions, individuals and commercial landlords and tenants in securities and business disputes. Victor has extensive previous industry experience as a senior design engineer for an aerospace company prior to earning his law degree.
- Stimwave Technologies v. Micron Medical Corp., et al., prosecution of breach of patent license agreements involving minimally invasive, miniaturized passive radio-frequency (RF) nerve stimulators/implants used for the treatment of pain and incontinence.
- Liebert Corp. v. SVO Building One LLC, prosecution of breach of contract and IP license agreement, trade secret misappropriation, and patent infringement involving power distribution and cooling technology used in the construction and operation of large data centers.
- RICMIC LLC v. Salient Networks, Inc., defense of patent infringement case involving interactive wireless networking “nurse call” alert systems used in hospitals and assisted living facilities.
- Neology v. Federal Signal, prosecuted patent infringement case involving passive radio-frequency identification (“RFID”) technology used in the tolling industry.
- D.R. Systems v CoActive, defended patent infringement case involving medical imaging technology.
- Lambda Optical Solutions, LLC v. Alcatel-Lucent, et al., obtained high seven-figure patent infringement settlement on the eve of trial in Delaware District Court for the company of the inventor of a groundbreaking all-optical switch for data transmission.
- DNT v. Sprint-Nextel, defended patent infringement claims seeking $170 million in damages involving mobile phone carrier’s wireless modem cards in the Eastern District of Virginia (“rocket docket”). Jury verdict of no infringement and invalidity of the asserted patent claims.
- Sorensen v. Kyocera, defended patent infringement claim involving two-step injection molding technology. Following the filing of a motion for summary judgment on a novel issue of law, client was able to obtain a confidential settlement on very favorable terms.
- Bandspeed v. Acer, Inc., defended patent infringement claim involving single-channel frequency hopping protocols used in Bluetooth® compliant products in the Eastern District of Texas.
- Aerus v. ProTeam, defended patent and trade dress infringement, false advertising, trade secret misappropriation, breach of contract and unfair competition claims involving ProTeam’s introduction of new upright vacuum cleaner. Following successful motions for summary judgment and motions in limine, plaintiff agreed to settle case on very favorable terms for the client.
- Alltech, Inc. v. Cenzone, defended patent infringement lawsuit involving biotechnology patent in the animal feed industry. Obtained confidential settlement on very favorable terms to client following deposition of plaintiff’s experts.
- Dataquill v. Kyocera, defended patent infringement lawsuit alleging that Kyocera’s cellular phones infringe on bar code reader patents.
- Elsevier v. Casken, Inc., defended copyright infringement lawsuit brought by several major US publishers against a bookstore chain.
- FTD v. Broadway Florist, prosecuted trademark infringement and dilution case involving FTD’s registered trademarks. Obtained favorable settlement on behalf of client.
- Kupfer v. Morgan Stanley, prosecuted arbitration case against securities brokerage firm alleging breach of fiduciary duty. Case resulted in an arbitration award granting the majority of the damages requested by client.
- Kupfer v. AG Edwards, prosecuted $3.5M arbitration case against securities brokerage firm alleging breach of fiduciary duty and fraud. Obtained a significant confidential settlement on behalf of client following presentation during mediation on how defendant had failed to meet its fiduciary obligations.
- On Line Evolution v. Vitalstream, Inc., prosecuted breach of contract dispute against major provider of Internet website hosting services. Obtained favorable settlement on behalf of client.
- Represented several commercial landlords in landlord-tenant lease disputes and subsequent actions for unlawful detainer and breach of contract.
- Defended Northern California real estate development company in numerous complex construction defect cases.
- Represented hundreds of owners of single family homes against developers and contractors, resulting in judgments and settlements totaling over $20M.
- Best Lawyers®, Litigation-Intellectual Property, 2023-present
- JD, University of San Diego School of Law
- BS (Mechanical Engineering), Boston University, magna cum laude
- Panelist. “Procopio International Litigation & Arbitration Retreat: Resolution of Conflicts involving the U.S. and Mexico,” San Diego, September 29, 2023.
- Author. “Powerful Remedies Against Trade Secret Misappropriation Abroad Appear Here to Stay,” February 4, 2022.
- Co-author. “ABA Section of Intellectual Property Law, Trade Secrets Interferences with Contracts Committee Annual Trade Secret Law Report 2019/2020,” American Bar Association, May 2021.
- Author. “Cómo el Nuevo Tratado Comercial entre Estados Unidos-México-Canadá Expande (en su Mayor parte) las Protecciones de Propiedad Intelectual,” August 4, 2020.
- Author. “How the New U.S.-Mexico-Canada Trade Deal (Mostly) Expands Intellectual Property Protections,” February 3, 2020.
- La Jolla Playhouse, Board of Trustees
- MIT Enterprise Forums San Diego Chapter, Summer Social Past Chair
- “Procopio Hits Toymaker With Patent Suit Over ‘Hovering’ Air Fort,” The Recorder, October 25, 2022.
- Fikes, Bradley. “Life Technologies Wins U.S. Supreme Court Patent Case,” San Diego Union-Tribune. February 23, 2017.
