- Intellectual Property
- IP Litigation
- Valuation & Assessment
- Intellectual Property & Technology Litigation
- Post-Grant Proceedings
|Contact Info||Telephone: 617.348.1870|
|University ||Duke University, BS, Mechanical Engineering|
|Law School||University of Connecticut, JD|
|Admitted||1996, Massachusetts; Connecticut; United States Patent and Trademark Office|
Michael is Division Head for the Intellectual Property Section at Mintz Levin and serves as a member on the firm's Policy Committee. He is an experienced litigator known for his business approach to creating value in patent assets. His success on behalf of clients comes from his ability to identify the value drivers in a portfolio and communicate that value to competitors, investors, purchasers, licensees, counsel, judges, and juries.
With a background in mechanical engineering and nearly 20 years' experience practicing law, he has the combination of technical and legal skills essential to a strategic patent practice. He has achieved courtroom victories and negotiated favorable settlements on behalf of both patent owners and accused infringers in complex negotiations and protracted litigation.
Michael develops strategies for and guides clients through monetization programs for complex technology portfolios. Several recent monetization programs have each returned tens of millions of dollars through litigation, licensing, and sale activities.
Michael also advises clients on patent portfolio assessment and conducts IP due diligence in connection with transactions. He counsels private equity firms and venture capital funds on IP assets and patent value. He also helps patent owners develop and implement strategies for identifying and leveraging untapped assets in their patent portfolios.
He has particularly deep experience litigating Section 337 matters before the International Trade Commission (ITC) and has also achieved significant success in Federal District Courts, including the Eastern District of Texas, District of Delaware, Northern District of California, District of Massachusetts, and numerous others.
Michael's technology experience includes electromechanical systems, digital cameras, embedded microprocessors, telecommunications and network software, cellular phones, and e-commerce, among others.
Michael rejoined Mintz Levin from Pepper Hamilton LLP in 2012.
Recognitions & Awards
•Chambers USA: Massachusetts - Intellectual Property (2015)
•Selected for the 2015 edition of IAM Strategy 300 - The World's Leading IP Strategists
•Identified in the IAM Patent 1000 2014, a listing of the “World's Leading Patent Practitioners, ” as a “go-to attorney for technology patent litigation
•Massachusetts Super Lawyers - Intellectual Property Litigation (2007, 2011 - 2014)
•Co-author, Ninth Circuit Upholds Judge Robart's RAND Determinations in Microsoft v. Motorola, Intellectual Property & Antitrust Alert (08.14.2015)
•Co-author, FTC Commissioners Weigh in on FRAND Debate, Intellectual Property Alert (07.27.2015)
•Co-author, EU Court Clarifies the Conditions Under Which Assertion of Standard-Essential Patents May Constitute Abuse of Market Dominance, Intellectual Property Alert (07.23.2015)
•Co-author, Writing on Her Own Behalf, Chairwoman Ramirez Takes a Position on FRAND, Intellectual Property Alert (07.17.2015)
•Co-author, ALJ Essex Elaborates an Evidence-Based Framework for Adjudicating the FRAND Defense, Intellectual Property Alert (06.11.2015)
•No One Told John Oliver About the America Invents Act: Last Week Tonight Stuck in 2012, Intellectual Property (05.04.2015)
•Co-author, The Innovation Act of 2015 and Trends in Fee-shifting in Patent Litigation, Intellectual Property Alert (03.13.2015)
•Co-author, IEEE Clarifies RAND Commitment for Standard-Essential Patents, Intellectual Property Advisory (02.13.2015)
•Carnegie Mellon University v. Marvell: $1.5 Billion at Stake at the Federal Circuit, Intellectual Property Advisory (01.13.2015)
•Co-author, Patentability of Software Post-Alice: How Do Courts Determine Whether an Idea is Abstract?, Intellectual Property Advisory (01.12.2015)
•Co-author, Patent Hold-Up or Patent Hold-Out? Judge Essex Adds His Voice to the SEP-FRAND Debate, Intellectual Property Alert (07.10.2014)
•Co-author, Computer Implementation Not Enough to Render Abstract Ideas Patent Eligible, Intellectual Property Alert (06.20.2014)
•Co-author, International Trade Commission Takes Steps to Promote Early Adjudication of Dispositive Issues, Intellectual Property Alert (07.03.2013)
•Moderator, All About Patent Quality - How to Invest in Powerful Patents, 2015 IP Dealmakers Forum, New York City (12.07.2015)
•Moderator, Monetization Models, IP Business Congress - The Annual Event for Global IP Leaders, Amsterdam (07.24.2014)
•Speaker, Key Strategies for Maximizing Value in Your Company's Software IP, Best Practices in Intellectual Property 2014, Tel Aviv, Israel (05.28.2014)
•Panelist, Determining the Value of Your Patents: Has It Become Science?, Best Practices in Intellectual Property 2014, Tel Aviv, Israel (05.27.2014)
•Featured in The World's Leading IP Strategists, Intellectual Asset Management (06.2015)
• Fifty-Two Mintz Levin Attorneys Featured in Chambers USA 2015 Guide, (05.19.2015)
• Mintz Levin Further Expands IP Practice with Addition of a Group of Life Sciences Attorneys, (02.03.2015)
• Mintz Levin Further Expands IP Practice with Eighteen Attorneys, (01.09.2015)
• Eighty-Five Mintz Levin Attorneys Named 2014 Massachusetts Super Lawyers and Rising Stars, (10.17.2014)
• Mintz Levin Helps Client Achieve Significant ITC Patent Victory, (09.04.2014)
•Quoted in Toshiba Loses Digital Display IP Fight before ITC, Law360 (09.03.2014)
• Mintz Levin Further Expands IP Practice with Addition of Terri Shieh-Newton in San Francisco, (04.28.2014)
• Seventy-Nine Mintz Levin Attorneys Named 2013 Massachusetts Super Lawyers and Rising Stars, (10.21.2013)
•Featured in Q&A with Mike Renaud, Law360 (05.01.2013)
•Featured in Mintz Levin Boosts Patent Practice with Pepper Hamilton Trio, Law360 (07.26.2012)
• Mintz Levin Expands International IP Litigation Practice, (07.25.2012)
|Reported Cases||Representative Matters: International Trade Commission: Certain Communications or Computing Devices and Components Thereof (337-TA-925) Represented owner of portfolio of communications and computing patents from former enterprise communications business unit of large multinational innovation company. Investigation was instituted in August 2014 as to respondent entities Apple, Samsung Electronics, LG Electronics and HTC Corporation. Google participated as an intervenor. The investigation resolved prior to evidentiary hearing.; Certain Consumer Electronics with Display and Processing Capabilities (337-TA-884) Represented investors in the patent portfolio of the original Silicon Graphics, now known as Graphics Properties Holdings, as complainant in the International Trade Commission. Investigation was instituted in June 2013 and among the respondent entities were Panasonic, Toshiba, Vizio, and ZTE. Most respondents settled. The ITC hearing was held over several days in May 2014, and on August 29, 2014 Mintz Levin successfully obtained a recommendation for a Limited Exclusion Order against the remaining respondent, which chose to settle while Commission review of the Administrative Law Judge's was pending.; Certain Consumer Electronics and Display Devices and Products Containing Same (337-TA-836) Represented investors in the patent portfolio of the former Silicon Graphics as complainant in the ITC, and as plaintiff in multiple parallel District of Delaware cases. Cases were filed between late 2011 and early 2012, and all were resolved by the end of January 2013. The technology at issue relates to LCD panels, central processor units, graphics processing units, and other microprocessor technology. Successfully licensed all respondents, including some of the largest and most recognized names in the converged device space - Apple, LG, Research in Motion, Samsung, and Sony.; Certain Portable Communication Devices (337-TA-827) Represented complainant in the ITC and as plaintiff in multiple parallel District of Delaware cases. Successfully licensed all respondents, including some of the largest and most recognized names in the converged device space - Amazon, LG, Motorola, Pantech Wireless, Research in Motion, Sony, and more. Cases were filed in December 2011 and settled in May 2012.; Certain LED Photographic Lighting Devices and Components Thereof (337-TA-804) Represented California-based complainant (plaintiff) and its UK parent, companies that make LED lighting systems for use in film and TV production, at the International Trade Commission. The ITC handed down its Final Initial Determination of infringement on September 7, 2012. On January 17, 2013, the ITC issued a General Exclusion Order (GEO) against respondents (defendants) based in both China and the United States. The result in this case is particularly notable because it is rare for the ITC to issue a GEO. It is much more common for complainants to seek and receive a Limited Exclusion Order from the court due to the rigorous criteria and careful balancing of interests that apply to requests for GEOs.; Certain Electronic Imaging Devices (337-TA-726) Represented complainant in this three-patent ITC case. Filed in June 2010 against converged device manufacturers and focused on digital camera technology found in cell phones, laptop computers, and personal digital assistants, the matter was fully settled in April 2011. The result was successful licensing programs with three out of four respondents, among which are recognized leaders in the electronics device manufacturing space - HTC, LG, Research in Motion, and more.; Certain Electronic Devices, including Handheld, Wireless Communications Devices (337-TA-667) Represented complainant in three-patent ITC case and in parallel Federal District Court cases. Filed in December 2008, the cases were settled as to all respondents by May 2010 and resulted in successful licensing agreements with each, including some of the largest and most recognized names in the converged device space - HTC, Panasonic, Research in Motion, and more.; Federal District Courts: Virnetx v. Mitel Networks Corp., et al (E.D. Tex. - 6: 11cv18) - Defended our client, the US division of a Germany-based global manufacturing concern, in a patent infringement action relating to secure network communications. Filed in January 2011, favorable settlement was achieved for our client in February 2013. Virnetx had previously scored a $368 million verdict against Apple and a $105 million verdict against Microsoft (Microsoft later settled with Virnetx for $200 million).; EON Corp. IP Holdings LLC v Skyguard LLC, et al. (E.D. Tex. - 6: 11cv15) - Represented a defendant in this multi-patent infringement case relating to vending management communication modules. Filed in June 2011 case was settled very favorably after 18 months of litigation. EON, formerly known as TV Answers, Inc., holds more than three-dozen patents and has been fairly aggressive in its enforcement of a number of them. Among their targets have been some of the largest and most successful technology companies, including Apple, LG, Pantech, Honeywell, RIM, T-Mobile, and more. In some instances, EON has extracted high settlements from these organizations.; Enterasys Networks, Inc., v. Foundry Networks, LLC, et al (D. Mass. - 1: 05cv11298) - Represented plaintiff asserting four patents relating to networking technology (switches, LAN networking). Filed in 2005, action settled favorably in 2013 after Markman hearing and prior to trial.; Vtrax Technologies Licensing, Inc. v. Siemens Communications, Inc., et al (S.D. Fl.- 9: 10cv80369) - Successfully defended our client, the US division of a Germany-based global manufacturing concern, an insurance carrier and a large national bank, in a patent infringement action relating to unified communications and related technologies. Case filed in March 2010 against various enterprise systems, obtained dismissal of case for our clients in June 2011.|
Documents by this lawyer on Martindale.com
Ninth Circuit Upholds Judge Robart’s RAND Determinations in Microsoft v. Motorola
Sandra J. Badin,Richard G. Gervase,Michael T. Renaud,Bruce D. Sokler, August 17, 2015
Late last month, the Ninth Circuit Court of Appeals issued its much-anticipated decision in Microsoft v. Motorola, a breach of contract action brought by Microsoft alleging that Motorola violated its commitment to license its standard essential patents (SEPs) on reasonable and non-discriminatory...
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