Michael’s practice focuses on patent litigation in the areas of technology and communication networks. He has significant experience in transactional matters including patent drafting and prosecution, managing and analyzing patent portfolios, and license negotiation.
Michael has worked in all areas of patent litigation in matters regarding cellular and landline telephone systems, fiber optic systems, liquid crystal display technology, Internet and search engine technology, and on-demand video content. He also has particular experience in cases involving electrical systems, solid state devices, optical systems, semiconductor fabrication, computers, software, and communication networks.
Prior to joining the firm, Michael practiced with a national law firm and an international law firm. Additionally, he has designed call center systems for AT&T as a telephone systems consultant before he attended law school.
Experience
Federal District Court
- Parus Holdings Inc. v. Apple, Inc. et al, 6:19-cv-00432, -00433, -00438, -00437, -00454 (W.D.Tex.)- Represent plaintiff in a patent infringement case involving robust voice browser system and voice activated device controller.
- Innovative Foundry Technologies LLC v. Semiconductor Manufacturing International Corporation, et al., 6:19-cv-00719 (W.D. Tex) - Represented Plaintiff in enforcing 4 patents related to semiconductor manufacturing technology. The case proceeded through Markman hearing where claims were construed favorably in all four patents and a “not invalid” determination issue in response to an attempt to invalidate one patent entirely. All claims between IFT and SMIC have been confidentially settled.
- Represented Advanced Micro Devices in multiple federal district cases running parallel with a complaint filed in the ITC. The patented technology covers graphics processing technology employed by smart devices such as televisions and handsets. Defendants included LG, VIZIO, MediaTek, and Sigma Designs. LG settled and the remaining defendants has Limited Exclusion Orders and Cease & Desist letters issued by the ITC in August 2018.
- Vtrax Technologies Licensing, Inc. v. Siemens Communications, Inc., et al (S.D. Fl.- 9:10-cv-80369) – 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.
- Cisco Systems, Inc. v. Teles AG (D. Del.– 1:09cv224) - Represented Cisco Systems, Inc. in multiple cases and reexaminations concerning VoIP patents; won summary judgment
- Mayfair Wireless, LLC v. Cisco Systems, Inc.( D. Del – 1:10cv1102) - Represented a defendant in a dispute involving telephony; won motion to dismiss for lack of standing
- JDSU Corporation and Emcore Corp. v. Optium Corp., now Finisar Corp. (W. D. Pa. – 2:07cv326) - Overall responsibility for management of a patent dispute involving optic transmission equipment; case went to trial and is currently subject to arbitration
- Consumers Interstate Corporation v. W.B. Mason Co., Inc. (D. Conn. –3:06cv174) – Overall responsibility for management of a patent dispute involving web technology
- Freedom Wireless, Inc. v. AT&T, Alltel Wireless, Inc., Cricket Comm. Inc. (E. D. Tex. –2:06cv504) - Represented the plaintiff in a patent dispute involving prepaid wireless technology
International Trade Commission
- Certain Video Processing Devices, Components Thereof, and Digital Smart Televisions Containing the Same (337-TA-1222) – Represented DivX, a video codec company headquartered in San Diego, in enforcing patents before the ITC in the District of Delaware. The asserted patents involve innovations relating to digital rights management and streaming media. LG and Samsung settled after the Markman order was issued, leaving TCL as the sole remaining respondent. Shortly after the seven day evidentiary hearing held in July 2021, one of the two principal suppliers of the accused streaming technology to TCL, namely Roku, stepped in and took a license to DivX’s portfolio, thus partially resolving DivX’s claims against TCL. Prior to the court issuing a decision on the merits, DivX and TCL entered into a bilateral settlement agreement resolving DivX’s remaining claims against TCl and bringing an end to all pending litigation.
- Certain Semiconductor Devices, Products Containing the Same, and Components Thereof (II) (337-TA-1177) - Represented GlobalFoundries at the International Trade Commission and in multiple Western District of Texas actions, involving the direct and indirect infringement of four patents related to semiconductor devices, integrated circuits, and products containing the same. Additional defendants in these actions included Apple, Broadcom, Cisco, nVidia, Arista, Asus, and Lenovo. Within 2.5 months of filing at the ITC, the cases settled on favorable terms.
- Certain Graphics Systems, Components Thereof, and Consumer Products Containing the Same (337-TA-1044) – Represented Advanced Micro Devices (AMD) as complainant in the ITC asserting patents covering graphics processing technology employed by smart devices such as televisions and handsets. Respondents include LG Electronics, VIZIO, MediaTek, and Sigma Designs, Inc. (SDI). Achieved settlement with LG prior to the conclusion of expert discovery. Following the evidentiary hearing, the presiding ALJ issued an initial determination finding a violation of Section 337 and recommending the imposition of an exclusion order against the remaining Respondents’ accused products. The ITC affirmed the ALJ’s finding of a violation on August 22, 2018. As a result, the Commission issued orders banning the importation of products made by VIZIO, MediaTek, and SDI and cease and desist orders against VIZIO and SDI.
- Certain Computing or Graphics Systems, Components Thereof, and Vehicles Containing Same (337-TA-984) – Represented owner of portfolio of graphics processing and microprocessor patents, Advanced Silicon Technologies, LLC, as Complainant in an ITC investigation adverse to a number of automotive manufacturers, and infotainment system and chip suppliers. Respondents include Honda, Toyota, BMW, Audi, Volkswagen, NVIDIA, Texas Instruments, Renesas, Harman International, and Fujitsu-Ten. The investigation instituted in January of 2016 and resolved favorably prior to the conclusion of expert discovery in August of 2016.
- 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, Enterprise System Technologies, S.A.R.L. An ITC 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 in June of 2015.
- Certain Point-to-Point Network Communication Devices and Products Containing Same (337-TA-892) - Representing complainant in 3-patent litigation involving streaming media technology at the International Trade Commission and in parallel case in the Eastern District of Texas. Respondents/defendants include some of the most recognized global electronics manufacturers, a number of which have settled resulting in the closing of the ITC case.
- Certain Consumer Electronics with Display and Processing Capabilities (337-TA-884) - Represented owners of the patent portfolio of the original Silicon Graphics, now known as Graphics Properties Holdings, as complainant in the ITC. Investigation was instituted in June 2013 and among the respondent entities were Panasonic, Toshiba, Vizio, and ZTE. Most respondents settled. After an evidentiary hearing held over several days in May 2014, on August 29, 2014 Mintz 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 Initial Determination was pending.
- Certain Consumer Electronics and Display Devices and Products Containing Same (337-TA-836) - Represented owners of the patent portfolio of the original Silicon Graphics, now known as Graphics Properties Holdings, 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.
viewpoints
DOJ Breaking with Big Tech Approach to SEPs
June 13, 2022 | Blog | By Daniel Weinger, Michael McNamara, Michael Renaud, James Thomson
On June 8, 2022, the DOJ, USPTO, and the National Institute of Standards and Technology (NIST) (collectively, the Agencies) issued a new statement on FRAND licensing (2022 Statement) providing no set policy regarding Standards Essential Patents (SEPs), which should inure to the benefit of patent owners. By issuing this statement and declining to adopt their 2021 Draft Policy (2021 Draft Policy), the Agencies effectively neutralized their policy on SEP licensing and provide no guidance to parties in SEP licensing discussions. Even with no guidance, however, the Agencies are reserving the right to police negotiations and prosecute opportunistic behavior by either side in a case-by-case basis, creating a circumstance where negotiators may not know if they are raising the Agencies’ ire. Though knowledge of the evolving multinational case law related to SEP license negotiation provides reasonable understanding of the necessary procedure.
Open Question: Use of Stolen Trade Secrets May or May Not Qualify as a Predicate Act Under RICO
March 10, 2022 | Blog | By Adam Samansky, Michael McNamara, Nicholas Armington , Oliver Ennis
Since the passage of the Defend Trade Secrets Act (DTSA), trade secret owners have been able to use allegations of trade secret misappropriation under the DTSA to support civil claims under the Racketeer Influence and Corrupt Organizations Act (RICO). Specifically, DTSA violations that qualify as predicate acts can be used to show a pattern of racketeering activity, which may allow a trade secret owner to state civil claims under RICO, and thus take advantage of the substantial remedies that the RICO statute provides, including the potential for treble damages and attorney’s fees.
Discretion Retained: USPTO Dodges Attack from Big Tech to Rein in Discretionary IPR Denials
November 22, 2021 | Blog | By Michael McNamara, Daniel Weinger
Mintz Rings in 2020 with Top 10 Recognition for ITC Practice
January 6, 2020 | Blog
Supreme Court Rejects USPTO Attorney Fee Policy
December 17, 2019 | Blog | By Michael McNamara, Sean Casey
With the U.K.’s Announcement, the European Unified Patent Court Moves Toward Realization
December 7, 2016 | Advisory | By Michael Renaud, James Wodarski, Michael McNamara, Robert Moore
“Processing System” Does Not Render Claims Indefinite
September 29, 2016 | Blog | By Michael McNamara, Michael Renaud
A New Hope for Software Patents?
June 2, 2016 | Blog | By Michael McNamara
Newsflash, Politico: 'Patent Death Squad' Alive and Well
June 24, 2015 | Blog | By Michael McNamara
Inter Partes Review Initial Filings of Paramount Importance: What Is Clear After Two Years of Inter Partes Review Under the AIA
October 21, 2014 | Advisory | By Michael McNamara
News & Press
Mintz represented the US Department of Energy (DoE) Loan Programs Office (LPO) in the closing of a $1.45 billion loan guarantee to Hanwha Q Cells Georgia, Inc. (QCells), a leading North American crystalline silicon solar manufacturer.
The Best Lawyers in America 2025 Recognizes 184 Mintz Attorneys across 56 Practice Areas
August 15, 2024
187 Mintz attorneys have been recognized by Best Lawyers® in the 2025 edition of The Best Lawyers in America©. Notably, three Mintz attorneys received 2025 “Lawyer of the Year” awards, and 64 firm attorneys were included in the 2025 edition of Best Lawyers: Ones to Watch.
BOSTON- Mintz has once again been recognized as one of the most active and high-performing International Trade Commission (ITC) law firms in the Patexia 2024 ITC Intelligence Report.
BOSTON – Mintz has been recognized as one of the most active and high-performing International Trade Commission (ITC) law firms in the Patexia 2023 ITC Intelligence Report.
Samsung, LG Settle DivX Patent Fights Over Smart TVs
July 30, 2021
Mintz Helps Client Achieve Significant ITC Patent Victory
September 04, 2014
Recognition & Awards
Ranked by Patexia among the Most Active ITC Attorneys Representing Complainants (2024)
Ranked by Patexia among the Best Performing ITC Attorneys Representing Complainants (2024)
Best Lawyers in America, Litigation - Intellectual Property (2025)