Michael A. Nicodema

Experience: District Courts and State Courts: Glenmark Pharmaceuticals, Ltd. v. Napo Pharmaceuticals, Inc., ICDT Case No. 50 122 T 00512 11. (International Centre for Dispute Resolution, A Division of the American Arbitration Association) Trial counsel to Glenmark in 8-day trial on breach of contract and declaratory judgment contract claims involving collaboration agreement concerning development and commercialization of a pharmaceutical product. (decision pending).; In the Matter of the Estate of Lou Rawls, PB 2006-001904, Superior Court of Arizona, Maricopa County. Defended the estate of singer Lou Rawls and his widow Nina Rawls in week-long trial of claims involving lack testamentary capacity, undue influence, and violation of Arizona Adult Protective Services Act, in connection with Mr. Rawls' last will and testament.; Air Express International, d/b/a DHL Global Forwarding Corporation v. Log-Net, Inc ., 12 Civ. 1732 (MAS)(TJB) (D.N.J.). Lead trial counsel for declaratory judgment plaintiff DHL in commercial dispute involving breach of contract claims and trade secret misappropriation claims. Obtained preliminary injunction for DHL on breach of contract claims that prevented irreparable injury to a major DHL business unit. Case currently in discovery.; Grow Company, Inc. v. Dilip Chokshi, et al., BER C-280-05. Lead trial counsel for defendants in trade secret misappropriation case involving nutritional yeast dietary supplements (N.J. Chancery Court). Obtained full defense judgment on all counts of complaint after eight week trial, and an award of almost $1 million in attorneys' fees and costs.; Contour Optik, Inc., et al. v. Revolution Eyewear, Inc., 02-01087 (VAP) (C.D. Cal.). As lead trial counsel, obtained a $4.3 million jury verdict, pre-judgment, post-judgment interest, and defeated plaintiff's equitable intervening rights defense for unclean hands.; Aspex Eyewear, Inc., et al. v. Concepts In Optics, Inc., 00-7067-Civ-Moreno. (S.D. Fla. 2007). As lead trial counsel, obtained an $8.2 million consent judgment for the Plaintiffs after trial and defeating infringer's Federal Circuit appeal.; Sta-Rite Industries, LLC v. ITT Corp., et al., CA No. 6:08-CV-59 (LED) (E.D. Tex.). Lead trial counsel for Plaintiff. Obtained settlement for client in the middle of jury trial on patents involving beverage and livewell pumps and pump brackets.; Soverain Software v. JC Penney, et al., 6:09-CV: 00274-LED (E.D. Tex.). Lead trial counsel for defendant, Avon Products, Inc., in case involving three patents directed to internet shopping and session identifier technology. Defended Avon's key YourAvon.com website, used exclusively by Avon's sales representatives, against multi-million dollar damages claim in 5 day jury trial.; Salient Surgical Technologies, Inc., and Medtronic, Inc. v. Bovie Medical Corporation, C.A. No. 10-494 (D. Del.) (SLR). Lead trial counsel for plaintiffs. Obtained settlement from defendant and acknowledgement of validity and enforceability of patent directed to electrosurgical device.; Betancourt v. Dolce International, Inc., et al ., No. 18 1666 01362 12 (AAA, New Jersey). Co-trial counsel for respondents in case involving state and federal claims of employment discrimination and breach of contract claims. Obtained settlement for client on all of petitioner's claims after two week trial.; Envirofinance Group, LLC, et al. v. The Louis Berger Group, Inc., et al ., BER-L-1397-13 (N.J. Sup. Ct., Bergen Cty.). Lead trial counsel for plaintiffs in case involving negligence, fraud, and construction design defect claims in connection with certain New Jersey wetlands projects. Case in discovery.; Mycone Dental Supply Co. v. Creative Nail Design, Inc. et al ., No. 1:11-cv-4380 (D.N.J.). Lead trial counsel for co-defendant Dymax Corporation in patent infringement case involving a patent on certain pre-treatment compositions used in the nail salon industry. Case in discovery and Markman hearing pending.; Universal Electronics Inc. v. Logitech Inc., et al . 8:11-cv-01056 (C.D. Cal.). Lead trial counsel for plaintiff in patent infringement case pertaining to remote controls and related technology. Obtained successful settlement for client after claim construction and summary judgment proceedings.; Kelora Systems v. Target, et al ., 11-cv-1548-CW (N.D. Cal.) Lead trial counsel for defendant Circuit City in patent infringement case involving patent relating to web-based parametric search systems. Obtained settlement for Circuit City.; Insured Deposits Conduit, LLC v. SFPI, LLC, Case 07-22735 (S.D. Fla.) (Ungaro). Lead trial counsel for patent owner SPFI in declaratory judgment action involving a method for securitization of certificates of deposit. Obtained dismissal for lack of subject matter jurisdiction on sophisticated MedImmune issue after close of discovery, and after obtaining claim construction victory on all disputed claim elements.; Honeywell Int'l Inc., et al. v. Universal Avionics Corp., et al., CA No. 02-359-MPT (D. Del. 2008). Represented Universal as co-lead trial counsel in patent infringement case involving avionics software. Case amicably settled at trial.; Metaldyne Company LLC. v. Alcoa, Inc., Case 2:07-CV-14272 (SMS). Lead trial counsel for Alcoa in trade secret misappropriation action involving aluminum steering knuckles used in the automotive industry. Obtained settlement for client on eve of trial.; Audiovox Corporation v. Monster Cable Products, Inc., Case No. CV-07-4622 (LDW) (E.D.N.Y.). Lead trial counsel for declaratory judgment plaintiff Audiovox in case involving one of Monster's patents and trademarks on cable assemblies used in a variety of consumer products. Obtained settlement and dismissal of Monster's claims after defeating Monster's motion to dismiss Audiovox's counts for trademark cancellation and fraud on the U.S. Trademark Office.; Internet Media Corporation v. Dell, Inc., et al., CA No. 05-633 (SLR). Lead trial counsel for defendant Office Depot, Inc. in patent infringement case involving patent on a system for accessing internet websites. Won claim construction by taking aggressive strategy and submitting a proposed construction on key claim element different from other co-defendants. Case settled.; Court of Appeals for the Federal Circuit: Aspex Eyewear, Inc. v. Marchon Eyewear, Inc., et al., 672 F.3d 1335 (Fed. Cir. 2012). Lead appellate counsel for appellants. Obtained precedential decision reversing District Court's grant of summary judgment of patent enforceability on grounds of res judicata in connection with patent on magnetic clip-on eyewear.; Innovention Toys, LLC v. MGA Entertainment, Inc., ---F.3d---, 2011WL 941563 (Fed. Cir. 2011). Lead appellate counsel for appellant MGA. In a precedential decision, obtained reversal of District Court's grant of summary judgment of patent validity on a patent for a laser board game, and expanded Federal Circuit law on issue of analogous art (cited 2 times by CAFC).; Aspex Eyewear, Inc., et al. v. Clariti Eyewear, Inc., 605 F.3d 1305 (Fed. Cir. 2010). Lead appellant counsel for appellants Aspex Eyewear, Inc. and Contour Optik, Inc. In a precedential decision: (1) defeated claim of inequitable conduct, and obtained ruling that knowledge and non-disclosure by patentee of a third party's patent application purportedly on the same invention sought to be patented is insufficient to establish intent to deceive where patentee had never seen the contents of the third party application; and (2) establishing that the mere grant of a motion for summary judgment is insufficient to support an award of attorneys' fees under 35 U.S.C. 285 (cited 11 times by CAFC).; Revolution Eyewear, Inc. v. Aspex Eyewear, et al., 563 F.3d 1358 (Fed. Cir. 2009). Precedential decision that expanded application of rarely applied Intel reasonably capable of infringement line of cases, and clarifying previous precedent on the validity of patent claims that recite a solution to only one of the problems in the prior art solved by the invention. Lead appellate counsel for counterclaimant and appellee Contour Optik, Inc. Obtained affirmance of district court's grant of summary judgment of infringement and patent validity, and affirmance of the jury's award of $4.3MM in damages to Contour (cited 40 times by CAFC).; Revolution Eyewear, Inc., et al. v. Aspex Eyewear, et al., 556 F.3d 1294 (Fed. Cir. 2009). Lead appellate counsel for defendants Aspex Eyewear, Inc. and Nonu Ifergan in appeal involving MedImmune issue relating to covenant not to sue offered by plaintiff on the eve of trial. Obtained reversal of district court's dismissal of defendants' counterclaims for invalidity and unenforceability. In a precedential decision, the Federal Circuit held that a covenant not to sue which did not cover future acts of alleged infringement on the products subject to the covenant did not strip the district court of declaratory judgment jurisdiction over the defendant's counterclaims for invalidity and unenforceability (cited 25 times by CAFC).; Aspex Eyewear, Inc. v. Miracle Optics, Inc., 434 F.3d 1336 (Fed. Cir. 2006). Lead appellate counsel for appellants Aspex Eyewear, Inc., and Contour Optik, Inc. In a precedential decision, obtained reversal of District Court's dismissal of appellants' infringement action for lack of standing. Established law that a reservation of rights clause in an exclusive license agreement with a hard termination date cannot transform the licensee into an assignment, and thus cannot deprive the licensee of co-Plaintiff standing to sue with the patent owner for infringement (cited 36 times by CAFC).; Aspex Eyewear, Inc., et al. v. Altair Eyewear, Inc., 07-1380, -1407 (Fed. Cir. 2008). Lead appellate counsel for Appellants Aspex Eyewear, Inc. (exclusive licensee) and Contour Optik, Inc. (patent owner). Obtained reversal of claim construction and reversal of grant of summary judgment of non-infringement on a patent covering magnetic clip-on eyewear; and affirmance of district court's denial of defendant's motion for summary judgment dismissing Aspex for lack of standing. Federal Circuit clarified potential ambiguity in its precedent by ruling that an oral or implied exclusive license is sufficient to confer co-plaintiff standing on the licensee to sue for infringement with the patent owner.; Aspex Eyewear, Inc. v. Miracle Optics, Inc., Appeal No. 04-1138 (Fed. Cir., March 2, 2006): Lead appellate counsel for plaintiffs/patent owners-exclusive licensees. Obtained reversal of District Court claim construction, and vacature of summary judgment of non-infringement.; Aspex Eyewear, Inc., et al. v. Concepts in Optics, Inc., et al., Appeal No. 03-1638 (Fed. Cir. 2004). Lead appellate counsel for plaintiffs/patent owners. Obtained vacature of summary judgment of invalidity for anticipation on plaintiffs' patent covering magnetic clip-on eyewear.