For more than 25 years, clients have relied on Michael Mallie for intellectual property-related strategic guidance.

His practice includes IP counseling and strategy, patent portfolio development and management and patent prosecution (US and foreign). He has secured patents for, and currently represents, a number of prominent multi-national, multi-billion dollar corporations, and early- and late-stage start-up companies in Silicon Valley and elsewhere.

Michael also provides services involving infringement, validity and enforceability analyses, freedom to operate analyses associated with new product development, patent portfolio reviews and analyses, and IP-related due diligence reviews related to acquisition and licensing transactions, preparing and prosecuting both inter partes reviews and ex parte reexamination requests on behalf of a number of companies. He also has provided litigation support services, including technical support, in a number of cases.

Michael is a writer and frequent speaker on intellectual property topics.

Publications
  • New Technologies in IP Transactions, Handling Intellectual Property Issues in Business Transactions 2008, Practicing Law Institute, 2008
  • IP Business Transactions Over the Internet, Handling Intellectual Property Issues in Business Transactions 2010, Practicing Law Institute, 2010
Professional Activities
  • California State Bar
  • Institute of Electrical and Electronics Engineers (IEEE)
  • American Bar Association
  • Silicon Valley Intellectual Property Law Association (SVIPLA)
    Experience

    Any result the lawyer or law firm may have achieved on behalf of clients in other matters does not necessarily indicate similar results can be obtained for other clients.

    • Sorna Corp. v. Perceptive Software, LLC - Acted as co-counsel for defendant, a medical equipment manufacturer, in a patent infringement action in which plaintiff asserted multiple patents against a software/hardware product designed to digitize and record medical images on a CD, which resulted in a favorable settlement as a result of preparing and filing multiple inter partes reviews (IPRs) challenging the validity of the patents.
    • Digital Equipment Corporation v. Intel Corp. - Acted as assistant counsel for Intel in patent infringement matter involving more than 20 patents related to microprocessor and related computer technologies.
    • DatCard Systems, Inc. v. Pacsgear, Inc. - Acted as co-counsel for defendant, a medical equipment manufacturer, in a patent infringement action in which plaintiff asserted five patents against a product designed to digitize and record medical images on a CD, which resulted in the court granting defendant’s motion for summary judgment finding two patents invalid and the other three patents not infringed.
    • Developed and executed strategies to enable quick issuance of software patent applications for large and small entities subsequent to the Alice decision.
    • Provided a strategy, including review of numerous patent assets, for an IP purchasing program of a startup client.

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    Bar admissions

    1991, California

    Admitted to practice before:

    • US District Court, Northern District of California
    • US Patent and Trademark Office

    Education

    • J.D., 1991, Santa Clara University School of Law
      • Editor-in-Chief, Santa Clara Law Review
    • B.S., 1986, University of Notre Dame, Electrical Engineering

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