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Litigating Under Patent Local Rules: Avoiding the Pitfalls 2014


Speaker(s): Michael M. Carlson
Recorded on: Sep. 30, 2014
PLI Program #: 61117

AREAS OF PRACTICE

  • Intellectual Property
  • Intellectual Property Litigation
  • Litigation Services
Mr. Carlson is experienced in many areas of commercial litigation, with particular focus in intellectual property litigation. He has federal and state trial experience in both civil and criminal matters, has argued cases before the U.S. Court of Appeals for the Federal Circuit and several districts of the California Court of Appeal, and has been involved in appeals before the U.S. Court of Appeals for the Ninth Circuit and the California Supreme Court. Mr. Carlson is chair of the Intellectual Property Litigation Practice Group.

He was previously a partner with the firm of Morrison & Foerster, LLP, where he served as Managing Partner of the firm's Palo Alto, California office from 1997 through 2000. Mr. Carlson also served as a Deputy Public Defender in the felony division of the San Francisco Public Defender's Office.

Trial Experience: 

  • Trial of a patent infringement case on behalf of a manufacturer of home water purification products. The trial resulted in a jury verdict in favor of Mr. Carlson's client.
  • Trial of a dispute over the interpretation of a contract conveying rights in patents, trademarks, internet domain names, and software. The trial resulted in a judgment in favor of Mr. Carlson's client.
  • Trial of a claim for reformation of a contract conveying geothermal mineral rights. The trial resulted in a judgment reforming the contract in favor of Mr. Carlson's client.
  • Trial of a products liability claim for damages arising out of the sale of allegedly defective concrete. The trial resulted in a jury verdict for Mr. Carlson's client.
  • Trial of a dispute over the accuracy of a post-acquisition audit of the acquired company’s assets for purposes of determining the final sales price.
  • Trial of partnership dispute over whether two investment advisors doing business together had entered into a partnership agreement.
  • Two criminal felony trials while serving on a temporary basis in the San Francisco Public Defender’s Office. One trial resulted in an acquittal.
Intellectual Property Experience:

  • Participation in the representation of a manufacturer of photolithography printing equipment used in semiconductor manufacturing which was suing a competing equipment manufacturer for patent infringement. Case involved simultaneous litigation in the United States, Europe, Japan and before the ITC. The litigation resulted in a settlement of $145 million to Mr. Carlson's client.
  • Obtained summary judgment of patent invalidity for a manufacturer of sports trading cards accused of infringing patents covering sports memorabilia trading cards. Summary judgment was affirmed on appeal to the Federal Circuit.
  • Argued appeal of summary judgment in patent infringement case before the U.S. Court of Appeal for the Federal Circuit.
  • Represented pharmaceutical company as “Opposer” of trademark registration before the Trademark Trial and Appeals Board.
  • Represented home cleaning products manufacturer in Lanham Act false advertising and patent infringement case.
  • Brought several patent infringement suits on behalf of owner of a patent for thermoformed shipping materials used to protect electronic devices against makers of infringing products.
  • Defended a Chapter 11 bankruptcy trustee in a claim made by a former employee of the bankrupt binocular manufacturer that entity’s principal product infringed the employee’s patent for a binocular eye piece.
  • Defended a Chapter 11 bankruptcy trustee against a claim that he infringed a registered copyright in computer software when he sold software as part of a disposition of the assets of a bankrupt tomato packaging company.
  • Defended the manufacturer of GPS devices sold to automobile finance companies to track and retrieve vehicles on which they had made loans in a patent infringement case involving a claim that the devices and tracking system infringed the plaintiff’s patent.
  • Defended a laser diodes manufacturer accused of infringing a patent for a chemical vapor deposition process used in the manufacture of semiconductors.
  • Representation of a biotechnology company in a dispute with another biotechnology company over who first discovered a human growth factor and was thereby entitled to a patent.
  • Defended a pharmaceutical company whose monoclonal antibody assays were accused of patent infringement.
  • Representation of a manufacturer of MOSFET semiconductors in a patent dispute over chip design.
  • Defended the manufacturer of oligonucleotide arrays (DNA on a chip), used for detecting genetic defects, in a patent infringement case.
  • Defended a manufacturer of rapid thermal processing equipment in a patent infringement action involving equipment, which was used in the manufacture of semiconductors.

Commercial Litigation Experience:

  • Representation of a national eyewear retailer in class action litigation claiming that its California operators violated California's optometry laws, unfair competition laws (§17200) and privacy laws.
  • Argued several appeals before the California Court of Appeal in matters involving insurance and environmental regulation. Involved on the briefing in appeals before the U.S. and California Supreme Courts and the Ninth Circuit Court of Appeals.
  • Representation of several bankruptcy Trustees in adversary proceedings involving subordination, fraudulent conveyance and preference issues.
  • Representation of clients in numerous breach of contract disputes.
  • Representation of a national insurance company in challenge to new California insurance regulatory scheme enacted by voter proposition (Proposition 103).
  • Representation of insurance companies in disputes over coverage for cost of cleanup of Superfund sites.

Education

  • Southern Methodist University, B.A., Economics, Political Science, graduated with highest honors, 1975
  • University of California, Berkeley School of Law, J.D., Order of the Coif, 1979

Court Admissions

  • All state and federal courts in California
  • Court of Appeals for the Federal Circuit
  • Court of Appeals for the Ninth Circuit
  • United States Supreme Court
  • U.S. Court of Claims

Bar Admissions

  • California

Professional Affiliations

  • Bar of California, Intellectual Property Section, member
  • San Francisco County Bar Association, member
  • San Francisco Intellectual Property Law Association, Vice President

Other Distinctions

  • Rated AV® Preeminent™ by Martindale-Hubbell®
  • Recognized by Super Lawyers in the area of Intellectual Property Litigation, 2014
  • Named a “Northern California Super Lawyer” by the publishers of Law & Politics for intellectual property litigation, 2004-2010
  • Recognized as one of "Silicon Valley's Top Attorneys" by San Jose Magazine, 2005 and 2006
  • Associate Editor, California Law Review, Boalt Hall School of Law, University of California at Berkeley
  • Served as an instructor of legal research and writing, Boalt Hall School of Law, University of California at Berkeley