J. Michael Jakes

Partner

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 numerous patent cases, including trials in federal district courts and before arbitration panels. He deals mainly with technologies related to the computer, electronics, semiconductor, software, and medical device industries.

The current leader of the firm’s appellate practice, Mr. Jakes has special expertise in appeals to the U.S. Court of Appeals for the Federal Circuit, where he has argued numerous appeals and has prepared and filed briefs in many more. He is currently a member of the Federal Circuit’s Advisory Council, appointed by the chief circuit judge.

Mr. Jakes has served as both a special master and a technical advisor to various U.S. district courts across the country. In this capacity, he has assisted the courts 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.

Mr. Jakes frequently teaches and lectures on patent law. He has taught courses on patent law at Catholic University Law School and patent appeals before the Federal Circuit at American University Law School. He has also been an instructor for Patent Resources Group on Federal Circuit practice, patent damages, and injunctions.

Highlights

• Represented Advanced Cardiovascular Systems (ACS) in a jury trial in the Delaware district court on patent infringement claims involving cardiovascular stents, and a 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.
• Represented Cardiac Pacemakers in a bench trial in the Delaware district court on the validity of a patent for implantable cardiac stimulators to treat heart failure; the validity of patent was upheld by the district court and the Federal Circuit on appeal.
• Represented Digital Control, Inc. (DCI) in an appeal involving patents on horizontal directional drilling equipment; the judgment that DCI’s patents are unenforceable for inequitable conduct was vacated by the Federal Circuit.
• Represented defendant Nike in a patent infringement action in the N.D. of New York involving hockey pads; obtained summary judgment of no infringement, which was affirmed by the Federal Circuit on appeal.
• Represented Eagle Comtronics in an appeal involving a patent on a cable filter assembly; obtained reversal of summary judgment of no infringement of Eagle’s patent.
• Represented Nortel in a patent infringement action in the E.D. of Virginia involving optical networking equipment; obtained summary judgment of noninfringement after a favorable claim construction, which was affirmed by the Federal Circuit on appeal.
• Represented Origin Medsystems in an appeal involving a patent on a surgical device; the judgment of willful infringement against Origin was vacated by the Federal Circuit.
• Served as law clerk to the Honorable Giles S. Rich, circuit judge of the U.S. Court of Appeals for the Federal Circuit, 1986-1988.
• Served as editor of the Georgetown Law Journal, 1985-1986.

Professional Recognition

• Recognized as a leader in the field of Intellectual Property Law by Chambers & Partners in its guide, Chambers USA: America’s Leading Lawyers for Business, which described him as “one of the most talented patent lawyers out there.” 2007-2010.
• Listed in the Washingtonian Magazine as a “Top Lawyer,” 2009.
• Named one of the top ten business litigators in Washington, 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, 2005-2010.

Professional Activities

• Advisory Council, U.S. Court of Appeals for the Federal Circuit
• American Intellectual Property Law Association (Amicus Committee, 1997-2001, 2005 present; 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 (Section on Intellectual Property Law; Chair, Antitrust Committee 1998-1999; Chair, Amicus Briefs Committee, 1995-1998)
• Giles S. Rich Moot Court Competition (National Director, 1989-1991)

Select Publications

• Coauthor. Court of Appeals for the Federal Circuit: Practice & Procedure, Matthew Bender & Co., 1993-present.
• "Using an Expert at a Markman Hearing: Practical and Tactical Considerations," IP Litigator, Aug. 2002.
• "A Statistical Look at the Federal Circuit's Patent Decisions: 1982-1994," Federal Circuit Bar Journal, 1995.
• "The Equitable Doctrine of Equivalents," National Inventor's Hall of Fame, 1993, reprinted in Journal of Patent and Trademark Office Society, 1993, and Intellectual Property Law Review, 1995.