Partner
Michael's district court experience includes every phase of litigation, from filing of the complaint through trial verdict. He develops and executes successful strategies for both patent owners and accused infringers by applying his broad experience with pre-filing investigations, developing infringement and validity positions, managing fact and expert discovery, building effective claim constructions, briefing dispositive motions, and taking and defending both fact and expert witnesses in depositions and at trial.
Michael's experience with post-grant proceedings goes back to the formation of the PTAB in 2012, serving as a lead associate on the first covered business method (CBM) review filed, argued, and decided. He has since litigated dozens of inter partes reviews (IPRs), CBMs, and post-grant reviews (PGRs), representing both petitioners and patent owners. His experience on behalf of patent owners includes securing one of just eight motions to amend granted by the PTAB in its first 4.5 years of issuing decisions. Because the patents at issue in post-grant proceedings regularly involve co-pending district court actions, Michael has particular insight into the interplay between parallel district court and post-grant review proceedings—a topic on which he writes and speaks.
Michael maintains an active prosecution practice. He has prepared and supervised the drafting of over a thousand patent applications and managed their subsequent prosecution before the U.S. Patent and Trademark Office (USPTO). He has organized and developed several large domestic and foreign patent portfolios covering an array of technologies, from FinTech to sensor-based tracking systems to lenticular airship designs. With much of his experience rooted in obtaining patent protection for software innovations in the FinTech space (both pre- and post-Alice), Michael has a keen understanding of patent eligibility under 35 U.S.C. § 101.
Michael is a co-chair of the firm's Blockchain, NFT, and Other Digital Assets industry group. Prior to joining Finnegan, he worked in integrated circuit design and developed testing software for modems, printing devices, cash acceptance systems, and other component devices of automated teller machines (ATMs).
IpVenture, Inc. v. FedEx Corp.
Defending FedEx against two patent infringement lawsuits against package tracking sensor technology; obtained stays pending proceedings at the USPTO; argued for FedEx in an inter partes reexamination and represented FedEx in an IPR of a related patent. The inter partes reexamination and IPR resulted in decisions cancelling all patent claims, and the Federal Circuit affirmed in both instances.
4:11-cv-05367, N.D. Cal., Judges Hamilton, Ryu
4:14-cv-04894, N.D. Cal., Judges Beeler, Hamilton, Seeborg
IPR2014-00833, PTAB, Judges Droesch, Lee, Zecher
16-1911, Fed. Cir., Judges Dyk, Hughes, O'Malley
CashEdge, Inc. and CheckFree Corp. v. FIS
Drafted CBM petitions filed by Metavante and FIS, leading to the institution of four CBM review proceedings that each resulted in a final written decision cancelling all patent claims.
3:12-cv-00015, M.D. Fla., Judges Howard, Toomey
CBM2013-00028, -00030, -00031, -00032, PTAB, Judges Grossman, McNamara, Pettigrew
15-1519, -1524, -1529, -1530, Fed. Cir.
SAP America Inc. v. Versata Development Group Inc.
Lead associate on the team for petitioner SAP in the first-ever PGR of a CBM patent; the PTAB ruled that all claims challenged by SAP were invalid under 35 USC § 101, concluding an expedited proceeding requested by SAP that lasted just nine months from petition filing to final written decision cancelling Versata's claims.
CBM2012-00001, PTAB, Judges Elluru, Lee, Medley, Tierney
14-1194, Fed. Cir., Judges Hughes, Newman, Plager
1:19-cv-12125, D. Mass., Judges Burroughs, Kelley
IPR2020-00733, -00734, -00735, -00863, PTAB, Judges Grossman, McMillin, Melvin, Saindon, Wieker
FedEx Corporate Services, Inc. v. Roambee Corporation
1:21-cv-00175, D. Del., Judge Connolly
SharkNinja Operating LLC et al. v. iRobot Corporation
IPR2020-00732, -00733, -00734, -00735, -00863, PTAB
Event
Fundamentals of Patent Litigation 2024 Fundamentals of Patent Litigation 2024
February 21, 2024
New York
Event
Fundamentals of Patent Litigation 2023 Fundamentals of Patent Litigation 2023
February 22, 2023
New York
Announcement
Finnegan Announces 2023 Mentors of the Year Finnegan Announces 2023 Mentors of the Year
December 29, 2023
Announcement
Finnegan Announces 2022 Mentors of the Year Finnegan Announces 2022 Mentors of the Year
December 30, 2022
Commentary
NFT Ownership Is Complicated NFT Ownership Is Complicated
August 25, 2022
The Wall Street JournalCommentary
Will Intellectual Property Issues Sidetrack NFT Adoption? Will Intellectual Property Issues Sidetrack NFT Adoption?
July 18, 2022
CointelegraphMedia Mention
PTAB Reverses Denial of SharkNinja IPR Request PTAB Reverses Denial of SharkNinja IPR Request
November 18, 2021
Law360Media Mention
PTAB Axes Another iRobot Patent in SharkNinja Vacuum Fight PTAB Axes Another iRobot Patent in SharkNinja Vacuum Fight
October 22, 2021
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