Michael Kahn is an experienced trial lawyer who focuses his practice on litigating patent infringement disputes and related claims such as trade secret misappropriation, unfair competition and breach of contract. Mr. Kahn sits on the firm’s IP committee as well as the firm’s hiring committee.
Practice & Background
Mr. Kahn’s trial practice spans a variety of technologies in district courts across the country and before the International Trade Commission. He has represented innovative companies in cases involving materials science, pharmaceuticals, medical devices, e-commerce, software, consumer products and electrical, chemical, computer science and mechanical engineering. Mr. Kahn has significant experience in all aspects of intellectual property litigation, including discovery, Markman, trial and appeal. He also represents clients before the Patent Trial and Appeal Board in inter partes review proceedings and in multidisciplinary matters with parallel proceedings in multiple judicial and administrative venues.
In addition to his litigation work, Mr. Kahn advises clients concerning intellectual property licensing, diligence, planning and strategy – both from a transactional perspective and in anticipation of litigation for both patent owners and potential defendants.
In addition to his client work, he is an active participant in 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.
Mr. Kahn is a frequent author and presenter on developing and cutting edge areas of intellectual property law.
Mr. Kahn represents plaintiffs and defendants in a number of intellectual property litigation cases. Below is a list of his representative matters:
- AptarGroup, Inc. and Aptar France S.A.S. v. 3M Co., Merck & Co., Inc., and Merck, Sharp & Dohme Corp. (N.D. Ill.): Represent defendants 3M Company, Merck & Co., Inc., and Merck, Sharp & Dohme Corp. in a patent infringement litigation concerning fluid dispenser systems.
- Ultratec, Inc. and CapTel, Inc. v. Sorenson Communications, Inc. and CaptionCall, LLC (Fed. Cir.): Represent defendants/appellees in plaintiffs’ appeal of a district court’s judgment of invalidity and defendants’ contingent cross-appeal on damages issues.
- Westech Aerosol Corporation v. 3M Company and GTA-NHT, Inc. d/b/a Northstar Chemical (W.D.Wa.): Lead counsel for defendants 3M Company and Northstar Chemicals in a patent infringement litigation concerning aerosol adhesive formulations.
- 3M Company and 3M Innovative Properties Company v. Amphenol Corporation (D.Del.): Lead counsel for plaintiffs 3M Company and 3M Innovative Properties Company in a patent infringement litigation concerning high performance shielded ribbon cables for data transmission.
- 3M Company and 3M Innovative Properties Company v. Phoenix Automotive Refinishing Co., Ltd. And K2 Concepts (C.D.Ca.): Lead counsel for plaintiffs 3M Company and 3M Innovative Properties Company in a patent, copyright and trademark infringement litigation concerning technology that improves the preparation, consumption, and cleanup of paint and other liquids used in spray guys.
- Ultratec, Inc. and CapTel, Inc. v. Sorenson Communications, Inc. and CaptionCall, LLC (W.D.Wis.): Lead counsel for defendants Sorenson and CaptionCall in multiple district court patent infringement cases concerning telecommunication systems and devices for the hearing impaired.
- Ultratec, Inc. v. CaptionCall, LLC(Fed. Cir.): Represent appellee CaptionCall in the appeals of 9 inter partes review proceedings before the Federal Circuit.
- Represented an innovative pharmaceutical company in a patent infringement litigation over biologic therapies (D. Del.).
- CaptionCall, L.L.C. v. Ultratec, Inc. (PTAB): Represent petitioner CaptionCall in multiple inter partes review proceedings over patents concerning telecommunication systems and devices for the hearing impaired.
- Albert Corporation v. Openfolio Corporation (S.D.N.Y.) – Lead counsel for counterclaim-plaintiff Openfolio in a breach of contract, unfair competition and misappropriation of trade secrets litigation concerning websites and applications for managing personal financial portfolios. Client Openfolio’s counterclaims were among the first brought under the Defend Trade Secrets Act of 2016. The case settled favorably for our client after we filed an early, targeted dispositive motion.
- Pall Corporation v. 3M Purification, Inc. (E.D.N.Y.): Represented 3M as lead counsel in patent litigation concerning pleated filter products with specific pleat dimensions and orientation. The case settled favorably for our client.
- 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.): Represented 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.
- Board of Trustees, Northern Westchester Hospital
- Board Member, EB Research Partnership, a charitable organization dedicated to funding research to treat and hopefully cure epidermolysis bullosa, a family of devastating genetic skin conditions.
Awards & Accolades
- New York Super Lawyers – Rising Stars (2012-2016)
- Immigration Equality – Safe Haven Award: recognized for excellence in pro bono representation (2013)
- Presenter, “Divided Infringement: From Akamai to Lilly,” American Conference Institute’s 4thAnnual Paragraph IV Disputes Master Symposium (September 20, 2016)
- Presenter, “The Medicines Company v. Hospira, Inc.” IPO Patent Committee Call (August 19, 2016)
- Presenter, “Sweeping Developments in Patent Reform Agenda: The Innovation Act and the PATENT Act – A 2016 Perspective LIVE Webcast,” The Knowledge Congress (May 16, 2016)
- Presenter, “Protecting Medical Device Patents In Light Of Increasingly Strict Subject Matter Patentability Standards – Myriad, Ariosa and Trade Secret Protection,” American Conference Institute’s 6thAdvanced Summit on Medical Device Patents (February 25, 2016)
- Presenter, “Patent Drafting and Prosecution: A Trial Lawyer’s Perspective” and Clinic Instructor, Practicing 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,” 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)