J. Michael Jakes
Mike Jakes has broad experience in all aspects of patent law, concentrating his practice on patent litigation and related counseling. He has been lead counsel on many patent cases, including trials in federal district courts and the U.S. International Trade Commission (ITC), and before arbitration panels. He deals mainly with computer, electronics, semiconductor, software, and medical device technologies.
Mr. Jakes has vast experience at the U.S. Court of Appeals for the Federal Circuit, where he has argued over 25 appeals and prepared and filed briefs in many more. He is a member of the Federal Circuit's Advisory Council, appointed by the chief circuit judge. He also led the firm's appellate section.
Mr. Jakes has served as both a special master and technical advisor to various U.S. district courts, assisting with claim construction and summary judgment motions on patents covering a wide variety of subjects, ranging from electronic ballasts for fluorescent lighting to pagers and cell phones, optical networks, mass storage devices, and steel wall systems.
A frequent lecturer on patent law, he has also taught university courses on patent law and appeals. Since 1993, he has served as coauthor of Matthew Bender's Court of Appeals for the Federal Circuit: Practice & Procedure.
- Bilski v. Kappos (S. Ct.). As lead counsel, argued for the petitioners in landmark case on patentability of business method patents.
- Paradox Security Systems v. ADT Security Services (E.D. Tex., Fed. Cir.). Defended accused infringers ADT and Digital Security Controls, both part of Tyco International, in a case involving a telephone line coupler; obtained a directed verdict of no infringement, which was affirmed on appeal.
- Semiconductor Chips Having Synchronous Dynamic Random Access Memory Controllers, 337-TA-661 (ITC). Represented complainant Rambus and 16 other respondents seeking to exclude nVidia memory controllers from the U.S.; three Rambus patents were found valid and infringed by the ALJ and the full ITC.
- Advanced Cardiovascular Systems v. Medtronic Vascular (Fed. Cir.). Represented ACS in jury trial on patent infringement claims involving cardiovascular stents and bench trial on enforceability of the patents; obtained a jury verdict for ACS on its infringement claims against Medtronic and a judgment that the patents are enforceable; also obtained summary judgment for ACS on all of Medtronic’s infringement and state law counterclaims, which was affirmed on appeal.
- Leviton Manufacturing v. Universal Security Instruments (Fed. Cir.). Represented Leviton in an appeal from inequitable conduct finding; Federal Circuit vacated the inequitable conduct finding on both materiality and intent, as well as the award of attorney fees against Leviton.
- Koninklijke Philips Electronics v. Cardiac Science Operating (Fed. Cir.). In an appeal from an interference action filed under 35 U.S.C. § 146, obtained a complete reversal of summary judgment against Philips.
- Digital Control, Inc. v. Charles Machine (Fed. Cir.). Represented DCI in an appeal involving patents on horizontal directional drilling equipment; the Federal Circuit vacated judgment that DCI’s patents are unenforceable for inequitable conduct.
- Bernard F. DePalma v. Riddell, Inc. (N.D.N.Y., Fed. Cir.). Represented defendant Nike in patent infringement action involving hockey pads; obtained summary judgment of no infringement, Federal Circuit affirmed.
- Arthur A. Collins, Inc. v. Northern Telecom Ltd. (Fed. Cir.). Represented Nortel in a patent infringement action in the E.D. Va. involving optical networking equipment; obtained summary judgment of noninfringement after a favorable claim construction, later affirmed by the Federal Circuit.
- General Surgical v. Origin Medsystems (N.D. Cal., Fed. Cir.). In an appeal involving a surgical device patent, judgment of willful infringement against client Origin Medsystems was vacated by the Federal Circuit.
- Law clerk to the Honorable Giles S. Rich, Federal Circuit, 1986-1988.
- Listed in LMG Life Sciences as an Intellectual Property: Life Sciences Star, 2013.
- Recognized as an "IP Star" in Washington, DC, by Managing Intellectual Property, 2013.
- Recognized as a leader in intellectual property law in Chambers USA, which described him as "one of the most talented patent lawyers out there," and "an exceptionally talented litigator who is picked by clients when hundreds of millions are at stake," 2007-2013.
- Recognized in Benchmark: Appellate, The Guide to America's Leading Litigation Firms and Attorneys as a leading appellate practitioner in the Federal Circuit, 2011, 2013.
- Top "IP Lawyer" Washingtonian Magazine, 2009, 2011, 2013-2014.
- Named one of the top ten business litigators in D.C. by Legal Times, 2007.
- Featured in The American Lawyer as part of the IP Litigation Department of the Year, 2006.
- Selected by his peers for inclusion in The Best Lawyers in America, 2005-2014.
- Recognized as a leading patent litigator in the D.C. area, 2011-2012; and before the Federal Circuit by Intellectual Asset Management, 2011-2013.
- U.S. Court of Appeals for the Federal Circuit (Advisory Council, 2008-present)
- American Intellectual Property Law Association (Amicus Committee, 1997-2001, 2005-2009; Special Committee on Patent Jury Trials, 1995-1997; chair, Awards Committee, 1992-1994)
- Federal Circuit Bar Association (chair, Patent Litigation Committee, 2003-2004)
- American Bar Association (chair, Antitrust Committee 1998-1999; chair, Amicus Briefs Committee, 1995-1998, and member, 2009-present)
- Giles S. Rich Moot Court Competition (national director, 1989-1991)