Michael H. Jacobs is a partner in the Intellectual Property Group in the firm's Washington, D.C. office. He specializes in patent, trademark, and copyright infringement litigation, patent interferences, intellectual property portfolio management, patent procurement, counseling, and licensing.
Mr. Jacobs has litigated patent disputes before district courts throughout the United States, the U.S. Patent and Trademark Office's Board of Patent Appeals and Interferences, and the U.S. International Trade Commission. In particular, Mr. Jacobs has extensive experience with patent interferences, managing all aspects of these cases from the pre-declaration stage through final judgment, including motions, discovery, and oral argument before the Board.
Mr. Jacobs' counseling work has involved assisting both large and small clients with the creation and implementation of intellectual property protection and procurement programs, as well as in evaluating infringement and validity issues for patentees and third parties. He has also worked with clients to develop creative solutions to managing intellectual property assets, including the development of portfolio-valuation tools.
Based on his professional and academic experiences, Mr. Jacobs has a broad and deep technical background. As an attorney, he has worked on matters involving digital and analog circuits and systems, Internet and other computer-software applications, video-display devices, wireless communications, catalytic chemistry, fibroblast mitogenesis, aptamers, and various mechanical systems. Prior to attending law school, he worked as an engineer on technologies including sonar signal processing, biomedical signal processing and instrumentation, and computer-assisted tomography. Mr. Jacobs' research work included mathematical modeling of evoked potentials, analog circuit design, and image processing.
Mr. Jacobs previously served as an adjunct faculty member in the Department of Electrical and Computer Engineering at Villanova University. Since 1999, Mr. Jacobs has served on the faculty of The Johns Hopkins University, where he has taught courses in computer ethics for the Department of Computer Science, and intellectual property law for the Information Security Institute.
Mr. Jacobs is a member of several professional organizations, including the American Bar Association, the American Intellectual Property Law Association, and the Intellectual Property Owners Association.
Mr. Jacobs was a Presidential Scholar at Villanova University, where he received his bachelor's degree in electrical engineering. He also has a master's degree in electrical engineering from Villanova and a master's degree in engineering and applied science from Yale University. Mr. Jacobs received his law degree from Georgetown University.
Representative Cases
· E.I. du Pont de Nemours and Company v. Kolon Industries, Inc., et al., No. 3:09-cv-58 (E.D. Va.): Represented plaintiff DuPont in case alleging misappropriation of over 100 trade secrets relating to KEVLAR® fiber technology in one of the largest trade secret misappropriation cases in the United States. Obtained a $919 million verdict against Kolon for the theft of KEVLAR® technology after an eight-week jury trial held in Richmond, Virginia.
· Rembrandt Data Technologies, LP v. Canon U.S.A., Inc., et al., No. 1:08-CV-1009 (E.D. Va.); No. 2010-1002 (Fed. Cir.). Represented Canon entities in patent-infringement action involving fax modem technology. Won on summary judgment in district court; case is currently on appeal.
· Flashpoint Technology, Inc. v. Leica Camera AG, No. 08-00139 (D. Del.). Representing Leica entities in action involving camera technology.
· In re Certain Machine Vision Software, Machine Vision Systems, and Products Containing Same, ITC Investigation No. 337-TA-2666. Representing Fuji Machine Manufacturing Co., Ltd. and Fuji America Corp. in action involving software for machine-vision systems.
· Linex v. Nortel et al., No. 05-80300 (S.D. Florida). Representing defendant in patent infringement action involving distributed telecommunications network using spread-spectrum modulation.
· Nextel Communications v. Motorola, Opposition Nos. 91/161,817 and 91/164,353 (TTAB). Represented telecommunications company in trademark oppositions relating to use and distinctiveness of sound marks. Decisions issued in Nextel's favor in both matters.
· SomaLogic, Inc. v. Santa Coloma, Interference No. 105,493 (BPAI). Represented patent applicant in interference directed to methods of obtaining aptamers.
· Thomas v. Sprint Spectrum et al., No. 2:07-CV-231 (E.D. Texas). Represented telecommunications companies in patent infringement action involving technology for controlling provision of utility services to consumers.
· ZymoGenetics v. Ludwig Institute for Cancer Research, Interference No. 105,433 (BPAI). Represented patent applicant in interference directed to fibroblast mitogenesis.
· Rossin v. Kanno (Guild Associates Inc. v. Hitachi Ltd.), Interference Nos. 105,402 and 105,512 (BPAI). Represented patent applicant in interferences directed to abatement of perfluorinated compounds.
· Johnson v. Heine (ColorLink, Inc. v. Unaxis Balzers AG), Interference No. 105,310 (BPAI). Represented patent applicant in interference directed to color-separation technology for video displays.
· Rowells v. Vichinsky (International Truck and Engine Corp. v. Mann & Hummel GmbH), Interference No. 105,518 (BPAI). Represented patentee in interference directed to fuel rail for intake manifold of internal combustion engine.
· Symbility v. Xactware, No. 2:05-CV-73068 (E.D. Michigan). Represented patentee in declaratory judgment action involving patents, copyrights, and trademarks for graphical modeling system used to develop insurance claim estimates.
· Fulhorst v. BMW AG, DaimlerChrysler AG, et al., No. 2:02-CV-41 (E.D. Texas). Represented automobile manufacturers in patent infringement action directed to car panic alarm systems.
· In re Plasma Display Panels, ITC Investigation No. 337-TA-445. Represented accused infringer in action involving driver circuitry for display panels.
· Moore USA v. Standard Register, No. 97-2054-A (E.D. Virginia). Represented defendant in patent infringement action involving business forms.
Publications
· "Recent Decisions of the United States Court of Appeals for the Federal Circuit, No. 21," International Legal Strategy, pp. 84-88 (November 2000). Co-Author: Michael H. Jacobs.
· "Recent Decisions of the United States Court of Appeals for the Federal Circuit, No. 6," International Legal Strategy, pp. 82-87 (August 1999). Co-Author: Michael H. Jacobs.
· "Now It's Easier to Tell No Tales from Japan," Legal Times Special Report on Intellectual Property, pp. 25-29 (April 12, 1999). Co-Author: Michael H. Jacobs.
· "Parametric Modeling of Somatosensory Evoked Potentials," IEEE Transactions on Biomedical Engineering, vol. BME-36, pp. 392-403 (March 1989). Authors: Michael H. Jacobs, S. S. Rao, and Gregory V. José.
Alerts & Newsletters
· "Interference Decision Finding Patent Specifications To Have Presented "New Evidence" Was Harmless Error," Intellectual Property Bullet Analyses (December 11, 2007). Contact: Michael H. Jacobs.
· "Public Use Must Be for Intended Purpose of Invention to Trigger § 102(b) Bar," Intellectual Property Bullet Analyses (May 31, 2007). Contact: Michael H. Jacobs.
Speaking Engagements
· "Intellectual Property Issues in Employment Law," Virginia State Bar Intellectual Property Section, 22nd Annual IP Fall CLE Weekend Seminar, Williamsburg, VA (October 2010). Co-Presenter: Michael H. Jacobs.
· "Copyright and Other Traps," Women in Government Relations Seminar on "Using Emerging Media to Power Your Grassroots, PAC, and Public Affairs Efforts," Washington, DC (April 2009). Presenter: Michael H. Jacobs.
· "Patent Reform in the United States: The Potential Consequences," Webcast to Australian IP Attorneys (October 2008). Presenter: Michael H. Jacobs.
· "Strategic Advice in the Aftermath of KSR Int'l Co. v. Teleflex Inc.," Japanese Patent Attorneys Association, Tokyo, Japan (October 2007). Presenter: Michael H. Jacobs.
· "Finding and Managing Corporate Intellectual Property Assets," 68th Annual Virginia State Bar Meeting, Virginia Beach, VA (June 2006). Co-Presenter: Michael H. Jacobs.
· "Creating and Receiving Value for Your Secrets," Crowell & Moring Trade Secrets Law Seminar (October 2004). Co-Presenter: Michael H. Jacobs.