He draws particular praise for his "very thorough and thoughtful work," as well as for his ability to explain complicated technology matters in layman's terms. As one client put it, he "knows the technology, knows the law and is very cost-effective." Chambers USA.
“He consistently supplies sound IP advice laced with good commercial sense. Fast on his feet and someone who thinks outside the box, he interweaves legal and business considerations well and has a strong understanding of technology.” IAM Patent 1000.
Overview
Michael Molano is the intellectual property practice leader and hiring partner for the Northern California offices. His practice largely focuses on patent litigation in district courts and before the ITC, but he has experience in all areas of litigation, including commercial disputes involving technology. Mike has served as first-chair trial counsel in both jury and bench trials, as well as in arbitration proceedings (JAMS, AAA, UNCITRAL and ICC).
Representative cases:
- Lead trial counsel in three-day bench trial asserting inequitable conduct. Patent owner filed Petition to Revive patent based on “unintentional abandonment” after admitting in an email that the patent was “intentionally abandoned.” Case settled weeks after bench trial. (D. Del. 2021)
- Lead arbitration counsel against a claim for breach of light emitting diode patent license. Claimant sought declaratory relief that patent license was violated. After week-long arbitration with witnesses appearing virtually from three continents, arbitration panel entered final award in client’s favor. (ICC Arbitration 2020)
- Lead trial counsel against a claim for patent indemnity. Plaintiff sought over $26 million in damages but was only awarded a fraction of that amount ($4.7 million) by verdict after a three-week jury trial. (Cal. Sup. Court 2015)
- Lead trial counsel in patent infringement case related to ship emissions. Won summary judgment of patent non-infringement on all claims except one. Last claim invalidated at bench trial. (C.D. Cal. 2015) Affirmed on appeal to Federal Circuit.
- Lead arbitration counsel in assertion of a breach of contract action related to software. After 3-day Hearing, Arbitrator found breach of contract in favor of client and awarded a six figure award, not including attorneys’ fees and costs. (AAA Arbitration 2012)
Chambers USA ranks Mike as a leading intellectual property lawyer in California, stating that clients describe him as “very thorough and thoughtful.” Chambers also notes that he “knows the law, knows the technology and is very cost-effective.” Mike was also recognized for his work in California in the 2015-21 editions of IAM Patent 1000, which describe him as a "bigwig" in IP and recommend him as “a smart choice for technically complex patent spats.” He is also described as “a dexterous technology-focused litigator" and “top-notch licensing negotiator” – predominantly for US and European-based entities – who is "known for his detail-oriented approach and great sense of humour.”
An electrical engineer, Mike has drafted and prosecuted patent applications in the semiconductor, software, hardware and other electro-mechanical technologies. He has also served as IP deal counsel in corporate transactions.
Lenguajes Hablados
- English
- Spanish
Experiencia
Electrical
- Represented Marvell Semiconductor, Inc. as lead trial counsel against a claim for patent indemnity brought by Emulex Corporation. Emulex sought over $26 million in damages but was only awarded a fraction of that amount ($4.7 million) by verdict after a three-week jury trial. (Cal. Sup. Court July 2015).
- Represented an electronics company in a multi-district litigation against an assertion by Plaintiff of MRI patent: favorable settlement.
- Represented a solar company in Northern District of California against an assertion by Plaintiff of solar interconnection patent: favorable settlement.
- Represented an electronics company in Delaware District Court against an assertion by Plaintiff of a light emitting diode patent: currently pending.
- Represented a clean air engineering company in Central District of California in a declaratory judgment action against owner of exhaust capturing system patent: invalidated patent after bench trial.
- Represented an electronics company in Eastern District of Texas against an assertion by Plaintiff of a digital fingerprinting patent: favorable settlement.
- Represented a semiconductor company in Eastern District of Texas against an assertion by Plaintiff of wall plug power products: favorable settlement.
- Represented a semiconductor company in Delaware District Court against an assertion by Plaintiff of a power management patent: final judgment of non-infringement on claim construction; affirmed on appeal.
- Represented an electronics company in Massachusetts District Court against an assertion by Plaintiff of a high-energy particle accelerator patent: defeated preliminary injunction motion.
- Represented a semiconductor company in Delaware District Court against an assertion by Plaintiff of a client/server data traffic patent: favorable settlement.
- Represented an electronics company in California Central District Court in an assertion of patents related to manufacturing of optical information carriers: won summary judgment.
Software
- Represented a software educational company in California Northern District Court and before the American Arbitration Association in an assertion of a breach of contract action related to electronic educational programs: after 3-day Hearing, Arbitrator found breach of contract in favor of Mayer Brown client and awarded a six figure award, not including attorneys’ fees and costs.
- Represented a computer manufacturer in Florida Southern District Court against an assertion by Plaintiff of a biometric matching patent: favorable settlement.
Semiconductor
- Represented an LED company in a 5-day arbitration before the International Chamber of Commerce with witnesses appearing virtually from three continents in a patent cross-license dispute. The arbitration tribunal found in favor of Mayer Brown’s client in a final award.
- Represented an electronics company in California Central District Court in action alleging infringement of five patents relating to light emitting diodes: confidential settlement.
- Represented semiconductor company in ITC Investigation under Section 337 of the Tariff Act relating to semiconductor fabrication methods: resulted in a Final Determination that invalidated all relevant claims of a first patent and all but one claim of a second patent.
- Represented semiconductor company in ITC Investigation under Section 337 of the Tariff Act relating to silicon signature semiconductor technology: resulted in determination of non-infringement and patent invalidity in favor of client.
Mechanical
- Represented solar company in asserting a solar panel mounting system patent against Defendants: stayed pending Reexam.
Copyright
- Represented semiconductor company in California Northern District Court against claims for copyright infringement, breach of contract and fraud: favorable settlement after winning summary judgment.
Trade Secret
- Represented semiconductor company in California state court in trade secret action relating to flash memory devices: favorable settlement.
Noticias
Educación
Northwestern University, BS, Electrical Engineering
Saint Louis University School of Law, JD
Moot Court Board
Admisiones
Bar
- California
- US Patent and Trademark Office
Membresías
- Creator, Chairman and Faculty for Practising Law Institute’s three-day patent law course titled “Fundamentals of Patent Prosecution” in San Francisco (2001-2020)
- Board Member, Beyond Barriers Athletic Foundation (giving scholarships for swim lessons to children in need) (2018-present)
- Bellarmine Dads’ Club Board Member (2011-2015)
- AYSO Region 109 Soccer League (Menlo Park/Atherton), Registrar (2016-2018); Regional Commissioner (2009-2015); Regional Coach Administrator (2005-2009)
- Global Education Committee Member, St. Louis University High School Strategic Plan Committee (Imagining 18)(2014-15)
- Board of Directors, The Little School Pre-School, San Francisco, California (Board Member, 2000–2003; Secretary and General Counsel, 2000–2002)
- San Francisco Bay Area IP Inn of Court, Master (past President and Executive Committee Member 2001-2006)