Michael P. Kahn
Michael is an experienced trial lawyer with “first chair” experience who focuses his practice on litigating patent infringement disputes and related claims such as trade secret misappropriation, unfair competition and breach of contract. In addition to his litigation practice, Michael advises clients concerning intellectual property licensing, planning and strategy – both from a portfolio management perspective and in anticipation of litigation for both patent owners and potential defendants. He also represents clients in connection with Patent Office inter partes review proceedings.
Michael is experienced in all aspects of intellectual property litigation, including discovery, Markman, trial and appeal and truly enjoys the fast-paced, oral advocacy components of trial practice. Michael’s litigation and trial experience spans a variety of technologies in district courts across the country and before the International Trade Commission, including materials science, pharmaceuticals, medical devices, e-commerce, software, consumer products and electrical, chemical, computer science and mechanical engineering.
In addition to his client work, Michael is an active participant in the firm’s pro bono programs, most recently in connection with multiple matters concerning asylum applications, petitions before the New York Department of State, and custody and visitation Family Court matters.
Michael also enjoys presenting on and writing articles about developing and cutting edge areas of intellectual property law.
During law school, Michael was an intern for the Honorable Marjorie O. Rendell at the United States Court of Appeals for the Third Circuit.
- In the Matter of Certain Device Containing Non-Volatile Memory and Products Containing the Same, U.S. ITC (Inv. No. 337-TA 922): Defended Spansion and its downstream customers in a four-patent case brought by Macronix involving flash memory technologies. We settled the matter favorably for our clients.
- TP Orthodontics, Inc. v. 3M Unitek (N.D. Ill.): Represented 3M Unitek in patent litigation concerning orthodontic brackets with a multi-layer adhesive base. We resolved the matter favorably for our client.
- AstraZeneca LP et al. v. Breath Ltd., Apotex Corp and Apotex Inc., and Sandoz, Inc. (D.N.J.): Represented AstraZeneca in ANDA litigation and 7-week trial involving pediatric asthma drug, PULMICORT RESPULES®, and patents concerning methods of treatment and sterilized compositions. The case is currently on remand.
- TravelClick, Inc. v. Variant Holdings, LLC, et al. (W.D.Wis.); Variant Holdings, LLC, et al. v. TravelClick, Inc. (E.D.Tex): Represented TravelClick in a series of litigations on multiple fronts concerning internet booking engines and e-commerce. We settled the matters favorably for our client.
- Roche Diagnostics Operations Inc. and Corange Int’l. Ltd. v. Nova Biomedical Corp., et al (D.Del.): Represented Nova in a patent infringement case involving two patents relating to blood glucose test strips asserted by Roche Diagnostics. The district court ruled on summary judgment that Nova does not infringe either patent after a successful Markman ruling.
- PanTaurus LLC v. Rovi Corporation (E.D.Tex.): Represented Rovi in a patent infringement litigation over computer systems with switches to segregate data sources. We settled the matter favorably for our client.
- Bayer HealthCare Pharmaceuticals, Inc. and Dow Pharmaceutical Sciences, Inc. v. River’s Edge Pharmaceuticals, LLC (N.D. Ga.): Currently represent plaintiffs in ANDA litigation concerning topical gel for the treatment of atopic dermatitis.
- Novartis Vaccines and Diagnostics Inc. v. Wyeth Pharmaceuticals, Inc. (E.D. Tex.): Represented Pfizer in a patent infringement case concerning recombinant Factor VIII protein used to treat hemophilia A patients. We settled the matter favorably for our client.
- SPRI Partners, LLC v. TravelClick, Inc. (N.D. Ill.): Represented TravelClick as lead counsel in a breach of contract/quasi-contract case concerning software and systems for TravelClick’s internet booking engine. We settled the matter favorably for our client.
- Suzanne Jaffe Stillman v. Bayer HealthCare LLC, et al. (C.D. Cal.) Represented Bayer in a patent infringement action concerning dietary supplements containing fiber, water and “encapsulated” probiotics. The plaintiff voluntarily dismissed with prejudice all direct infringement claims after the court granted our motion to dismiss all claims for indirect infringement.
- Merit Industries, Inc. v. JVL Corporation: Represented JVL over the course of a five-year case in which Merit alleged JVL’s entire product line infringed three Merit patents. A federal jury found that none of JVL’s current products infringed any Merit patent, invalidated many of the asserted claims and denied Merit’s demand for lost profits, awarding instead only a token sum (less than seven percent of what was sought) for reasonable royalties for infringement by a subset of JVL’s past products.
- Analog Devices, Inc. v. Linear Technology Corporation; Represented Linear Technology in a patent infringement action relating to various patents on analog integrated circuitry. Along with denying that it had infringed any of Analog’s three asserted patents, our client counterclaimed for patent infringement based on eight of Linear’s U.S. patents. We settled the matter favorably for our client.
- VLT, Inc. v. Lucent Technologies, Inc.: Represented Lucent in a patent infringement action concerning a patent related to voltage regulator circuits. We settled the matter favorably for our client.
- New York Super Lawyers – Rising Stars (2012-2014)
- Immigration Equality – Safe Haven Award : recognized for excellence in pro bono representation (2013)
- Co-author, “A Return to Opinions of Counsel – A “Good Faith Belief” of Invalidity as a Defense to Inducement: Commil v. Cisco,” NYIPLA Bulletin (August – September, 2014)
- Co-author, “The Evolution of Divided Infringement Doctrine and the Potential Risk to Critical Innovation in Life Sciences,” Bloomberg BNA’s Pharmaceutical Law & Industry Report (August 8, 2014)
- Quoted, “Supreme Court rules for Limelight in patent infringement appeal,” Inside Counsel (June 3, 2014)
- Quoted, “Lawyers react to Limelight, Nautilus rulings,” World Intellectual Property Review (June 3, 2014)
- Quoted, “SCOTUS provides more light for patent reformers; Justice Alito scolds CAFC,” Intellectual Asset Management (June 3, 2014)
- Quoted, “Inducement Ruling Invites Multiparty-Infringement Review,” Law360 (June 2, 2014)
- Quoted, “Supreme Court Slaps Loose Business-Method Patents, Federal Circuit In Rulings,” Forbes (June 2, 2014)
- Quoted, “Justices Take Aim At Fed. Circ. Induced Infringement Rule,” Law360 (April 30, 2014)
- Co-author, “Patent Drafting and Prosecution: The Intrinsic Record and Its Impact on Patent Litigation,” PLI’s Fundamentals of Patent Prosecution 2014 (February 28, 2014)
- Co-author, “How to Address the Influx of NPE Litigation? A Multifaceted Approach to a One-Trick Plaintiff,” NYIPLA Patent CLE Seminar (December 20, 2013)
- Co-author, “The Recent Evolution of Patent Law Alongside the Progression of Video Games into Interactive Social Media,” LSI Gamer Tech Law Seminar (October 7-8, 2013)
- Co-author, “Patent Drafting and Prosecution: The Intrinsic Record and its Impact on Patent Litigation,” PLI Fundamentals of Patent Prosecution 2013 (March 1, 2013)
- Co-author, “Bowman v. Monsanto: If Bowman Wins, Monsanto and Bowman Lose,” Bloomberg BNA’s Patent, Trademark & Copyright Journal (February 15, 2013)
- Quoted, “Supreme Court to Mull Extent of Patent Protection for Monsanto Branded Seed,” The Litigation Daily (February 15, 2013)
- Quoted, “High Court Could Limit Patent Rights In Monsanto Case,” Law360 (February 11, 2013)
- Michael Kahn and Beth Finkelstein “A Court Still Divided on Joint Infringement,” Intellectual Property Today (October 2012); article republished PLI Fundamentals of Patent Prosecution 2013 (April 2013)
- Michael Kahn and Justin Colannino “Uncertainty For Computer-Based Means-Plus-Function Claims,” Law360 (September 24, 2012)
- “Federal Circuit Refines 'Induced Infringement' Theory to Revive Akamai and McKesson Suits,” The AmLaw Litigation Daily (August 31, 2012)
- “Fed. Circ. Makes Induced Infringement Easier To Prove,” Law360 (August 31, 2012)
- Michael Kahn and Beth Finkelstein “Innovation and Differentiation in Life Sciences—The Public Interest Factor in the Injunction Analysis,” Patent, Trademark & Copyright Journal (August 2012)
- Michael Kahn and Beth Finkelstein, “A Divided Court on the Issue of Joint Infringement,” Intellectual Property Today (April 2012); article republished IP Frontline (May 2012); article republished PLI Fundamentals of Patent Prosecution 2013 (April 2013)
- Presenter and Clinic Instructor, “Litigation Issues“ and “Patent Prosecution and Opinion Drafting Clinic,” Practising Law Institute Fundamentals of Patent Prosecution 2015: A Boot Camp for Claim Drafting & Amendment Writing (June 17, 2015)
- Presenter, “Patent Litigation,” New York City Bar Association “Patents 101” CLE (April 9, 2015)
- Presenter, “Hot Topics” panel, Association of Corporate Patent Counsel Summer Meeting (June 24, 2014)
- Speaker, “Divided Infringement Update,” Ropes & Gray IPMC Financial Services Roundtable (April 7, 2014)
- Presenter, “Addressing the Influx of NPE Litigation,” NYIPLA Patent CLE Seminar (January 16, 2014)
- Presenter, “The Progression of Video Games into Interactive Social Media Outlets,” LSI Gamer Tech Law Seminar (October 7-8, 2013)
- Presenter, “Patent Drafting and Prosecution: A Trial Lawyer’s Perspective,” Practicing Law Institute Fundamentals of Patent Prosecution 2013 (June 14, 2013)
- Presenter, “Divided Infringement Update,” IPMC Financial Services Roundtable (April 11, 2012)