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Steven L. Caponi

Fax +1.302.416.7020

Steven Caponi maintains a national litigation practice with a concentration on corporate and intellectual property matters. His practice covers all facets of business litigation including breach of fiduciary duty and corporate governance claims, merger and acquisition litigation, securities litigation, patent infringement and intellectual property, and cybersecurity and data privacy.

Mr. Caponi regularly handles matters in jurisdictions across the United States. He frequently appears before the state and federal courts in Delaware, including the Court of Chancery.

As a prominent speaker and writer, Mr. Caponi is widely recognized for his practical leadership on a wide range of cybersecurity policy issues, including emerging trends, NIST Compliance, industry best practices, data breach preparedness and response, and federal and state regulation. He has become a well-known policy and substantive thought leader in the areas of cybersecurity and data privacy.

Professional/Civic Activities

  • American Bar Association
  • Delaware Bar Association
  • Federal District Court for the District of Delaware
  • United States Court of Appeals for the Third Circuit
  • Board of Directors DuPont Country

Speaking Engagements

Mr. Caponi frequently lectures on cybersecurity and data security policy at the request of clients, industry trade groups and government agencies. Mr. Caponi has also lectured as lectured for the Delaware Bar Association, the Federal Bar Association and annually teaches the Fundamentals of Civil Litigation in the District of Delaware.
Intellectual Property
  • Represented one of the largest pure-play software companies in a software licensing and copyright infringement dispute involving a Fortune 100 company that provides pharmacy benefit management services. Micro Focus (U.S.), Inc. v. Express Scripts, Inc. 8:16-cv-00971-PX (D. Md.)
  • Represented leader in the development of innovative solutions for the freight and passenger rail industries in connection with the prosecution of a patent infringement action against a competitor and in defense of anti trust litigation brought by a competitor. Westinghouse Air Brake Technologies Corporation v. Siemens Mobility, Inc. 1:17-cv-01687-LPS (D. Del.)
  • Regularly represented social media giant Facebook in patent infringement actions pending in Delaware
  • Represented award-winning developer of software applications for enhancing cybersecurity defense protocols for the finance, banking, retail and higher education industries in patent infringement action. Phishme, Inc. v. Wombat Security Technologies, Inc. 1:16-cv-00403-LPS-CJB (D. Del.)
  • Represented global leader in on-line travel platforms and $1.6 trillion travel industry in patent infringement action. T-Jat Systems 2006 Ltd. v. Expedia, Inc. (DE), et al. 1:16-cv-00581-RGA
  • Represented vertically integrated global pharmaceutical company in a patent infringement action brought by competitor against numerous defendants. Bayer Pharma AG et al. v. Macleods Pharm. Ltd., et al. 1:15-cv-00464 (D. Del.)
  • Represented leading provider of healthcare and pharmaceutical analytics in a patent, trademark, and antitrust litigation brought against largest competitor before the PTO and multiple Federal District Courts. E.g., IMS Health Inc. v. Symphony Health Solutions Corp., et. al., 1:13-cv-02071 (D. Del.)/(E.D. Pa.)
  • Represented leading provider of software solutions for securing networks, desktop, and mobile devices in monetizing and protecting its technology before the PTO and various Federal District Courts. E.g., StrikeForce Technologies, Inc. v. Microsoft Corp., 1:15-cv-00490 (D. Del.)/(W.D. Wash.)/(D.N.J.)
  • Represented defense group of leading providers of Internet services, including YAHOO!, Time Warner, Comcast, AT&T, Microsoft and Cisco, in a patent infringement action involving e-mail certification protocols, and successfully invalidated the patent in suit. Buyerleverage Email Solutions LLC v. Microsoft Corp., et al., 1:11-cv-00645 (D. Del.)
  • Represented leading manufacturer and distributor of dental product solutions in action involving allegations of trademark and theft of trade secrets against competitor. Gebr Brasseler GmbH &lamp; Co. KG et al., v. Brasseler USA, Inc., 1:15-cv-00899 (D. Del.)

Corporate / Commercial Litigation
  • Served as national litigation counsel and defense group coordination counsel for a leading publisher of video games in a series of litigations involving claims for securities fraud, options backdating, breaches of fiduciary duty, and improper business practices. Represented client's interests before the SEC, NASD, and several state and federal courts.
  • Served as international litigation counsel and defense group coordination counsel for consortium of leading financial institutions in a series of actions involving bank fraud and securities fraud emanating from a Ponzi scheme that resulted in damages in excess of $500 million, which actions also resulted in criminal prosecutions by the Department of Justice. Cases pending in five separate Federal District Courts, including the Southern District of New York, Western District of Pennsylvania and District of Delaware.
  • Represented national mortgage lender in defense of a litigation filed by the largest shareholder of a target company when a merger did not close because the target company suffered a materially adverse event and failed to honor its obligation under the merger agreement. Case pending in the Southern District of New York.
  • Served as international coordinating counsel for a consortium of Russian mining and manufacturing interests related to the purchase and sale of gold mining assets on three continents. Initiated civil RICO, fraud, and related claims in the United States, coordinated the defense of civil actions in Canada and B.V.I., and served as liaison with prosecution of criminal complaints in Russia and Ukraine. Cases pending in the Delaware Court of Chancery and Southern District of New York.
  • Represented national resort and gaming company in defense of a class-action suit seeking to enjoin a strategic merger. Implemented a successful litigation strategy that resulted in the action being voluntarily dismissed, without compensating to plaintiffs or their counsel, and timely closing of the merger. Case pending in the Delaware Court of Chancery.
  • Represented ultra high net worth family in a series of litigations involving an unscrupulous private equity fund and asserted claims for breach of contract, violations of securities laws, and breach of fiduciary duty. Cases pending in Illinois state court, Delaware Court of Chancery, Delaware Superior Court and Delaware Bankruptcy Court,
  • Represented a leading designer and manufacturer of women’s apparel in defense of several shareholder derivative actions challenging the client’s $120 million acquisition of a competitor. The litigations included claims for breach of fiduciary duty, improper disclosures, and ineffective corporate governance. Simultaneously and successfully resolved mirror-image derivative actions filed in Delaware and California.
  • Represent member of the Saudi Royal family in connection with claims pending in the Delaware Court of Chancery and Grand Court of the Cayman Islands seeking to resolve disputes under a limited liability operating agreement related to control, dissolution and distribution of entity assets.
  • Represented owner of leading American shipyards engaged in the construction of new vessels and vessel maintenance, repair, overhaul, and conversion. Representation included litigation involving the construction of over $450 million of new Jones Act-compliant vessels and defense of various litigations resulting from the purchase and sale of shipyard facilities valued in excess of $300 million.
  • Served as lead counsel and coordination counsel for defense group representing a regional telecommunications company in defense of shareholder derivative actions seeking to enjoin the client’s proposed sale to a competitor. Simultaneously and successfully resolved derivative actions filed in the Delaware Court of Chancery and Pennsylvania state court.
  • Vindicated rights of a significant shareholder who was stripped of his stock following a freeze-out merger involving allegations of massive self-dealing and diversion of assets by corporate fiduciaries, and led a stockholder appraisal action pursuant to Section 262 of the Delaware General Corporation Law.*
  • Represented plaintiff in a breach-of-contract action involving the recovery of more than $20 million in damages resulting from violations of an exclusivity agreement and the failed $125 million acquisition of the defendants’ wholly owned subsidiary. Case pending in the Delaware Court of Chancery.

  • Counseled leading national manufacturer and distributor of snack products following cyberattack targeting payroll data. Successfully contained breach, remediated all issues, and preserved client’s public image.
  • Advised board of directors of a multivertical cloud company regarding the scope of their cybersecurity risk and steps necessary to discharge their fiduciary duties. Engagement included an enterprise-wide evaluation of cybersecurity practices and policies and resulted in a comprehensive plan to mitigate cybersecurity risks.
  • Advised leading owner/operator of over 600 convenience stores regarding cybersecurity threats and implementation of remediation plan to identify and adopt appropriate cybersecurity policies and procedures.
  • Retained as national cybersecurity and data breach response counsel for international provider of insurance and financial services products. Engagement involved all facets of cybersecurity preparedness, including evaluation of risks, creation of cyber response plan, and post-breach response.
  • Represented national rental car provider in connection with FBI and Department of Homeland Security investigation of anticipated foreign cyberattack. Representation involved interfacing with authorities, adoption of pre-attack defense protocols, and advising C-Suite on how to manage the threat and respond to an incident.
  • Represented leading provider of health care analytics in contract negotiations with international pharmaceutical company pertaining to the exchange of highly sensitive competitive trade secrets. Negotiations centered on substantial cybersecurity and data privacy requirements, including indemnification and limitation on liability provisions.
  • Counseled provider of video and data services for Fortune 100 companies with merger and acquisition due diligence. Representation involved identification of past and present cybersecurity incidents, drafting appropriate representations and warranties, and securing sufficient post-closing indemnification rights.

* Denotes experience completed at a prior firm