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Michael B. Marion

Associate vCard


Education

  • Catholic University of America (JD, magna cum laude)
  • Duke University (BSE, Biomedical Engineering)

Bar Admissions

  • District of Columbia
  • Virginia
  • United States Patent and Trademark Office

Michael focuses his energy on developing and implementing patent and other IP protection strategies for companies in growth and maturity phases. In this work he uses different combinations of his experience with patent litigation, IP asset acquisition, patent prosecution, portfolio strategy, and licensing to meet individual clients’ particular needs. While his work has heavily focused on patents, he also handles trademark and copyright matters.

He represents clients enforcing patent rights and those defending against infringement allegations. He has been a central cast member in a number of patent litigation and licensing matters, including patent monetization campaigns, which include the full range of post-prosecution work. Technologies covered by these litigation-focused matters include medical devices, biotechnology, pharmaceutical, and high tech devices. 

In his prosecution and licensing work, Michael has worked on portfolios including technology for refrigerators, copiers, displays, electric car batteries, stents, farm implements, and apparatuses for manufacturing semiconductor chips and drying powder. He has also worked on remote control technologies and airplane braking systems.  

Michael served as an Extern to the Honorable Brook Hedge of the D.C. Superior Court and as a Law Clerk in the office of the Public Defender in Rockville Maryland. Michael is committed to the firm’s Pro Bono practice and works with DC Legal Aid to help individuals and families facing eviction proceedings.  More information about Michael’s Pro Bono work can be found in the Mintz Levin Pro Bono Journal.

Representative Matters

  • Partnered with international medical device company specializing in developing minimally invasive endosurgical tools and imaging solutions. Collaborated on comprehensive strategy for patent portfolio and evaluating potential licensees. Strategy included patent litigation against competitor in endoscope space. Oversaw day-to-day operation of the case, including developing claim construction, infringement, and validity positions, and handling discovery and motions practice.

  • Analyzed patent portfolios for potential acquisition by clients. Studied portfolios for value in marketplace and made recommendations whether to pursue purchase of patent assets. Projects included technology covering ADHD drug encapsulation, wearable fitness sensors, and Bluetooth communications.
  • Evaluated underleveraged intelligent video surveillance patent portfolio for potential monetization campaign against foreign manufactures. Analysis required full portfolio review for best assertion candidates, close work with client conducting in-depth assessment of current and future products, and study of competitor products for potential infringement allegations.
  • Represented hearing aid company plaintiff on digital signal processing patent. Work included conducting fact and expert discovery, taking depositions, as well as drafting motions briefs. Argued Markman hearing, with court ruling in client’s favor on all disputed terms.
  • Successfully appealed to Federal Circuit from Board of Patent Appeals and Interferences arguing “error” under reissue statue included omission of claims of narrower scope. Principal author on brief. Mooted arguing partner.
  • Member of International Trade Commission litigation team. Work encompassed all phases of litigation, from pre-filing diligence, discovery, motions practice, and technical and expert depositions, through pre-trial briefing and preparation, and post-trial briefing. Handled multiple investigations on components of mobile and tablet devices, mobile operating systems, and RDIMM modules. Respondents asserted unique RAND defenses of standard-essential patents in most recent investigation, requiring extensive economic analysis of patent hold-up and patent hold-out.
  • Arbitration trial team member centering on dispute over development of patented custom orthotic insole. Achieved substantial settlement win for client mid-hearing.
  • Drafted petitions for Inter Partes Review on safety drug handling device and method of exercise prescription and evaluation.
  • Deposed technical witnesses in Hatch-Waxman action involving multiple Orange Book-listed patents for the drug Livalo, an HMG-CoA reductase inhibitor.

International Trade Commission

  • Certain Communications or Computing Devices and Components Thereof (337-TA-925) Represented owner of portfolio of communications and computing patents from former enterprise communications business unit of large multinational innovation company. An ITC investigation was instituted in August 2014 as to respondent entities Apple, Samsung Electronics, LG Electronics and HTC Corporation. Google participated as an intervenor. The investigation resolved prior to evidentiary hearing in June of 2015.
  • Certain Consumer Electronics with Display and Processing Capabilities (337-TA-884) Represented owners of the patent portfolio of the original Silicon Graphics, now known as Graphics Properties Holdings, as complainant in the ITC. Investigation was instituted in June 2013 and among the respondent entities were Panasonic, Toshiba, Vizio, and ZTE. Most respondents settled. After an evidentiary hearing held over several days in May 2014, on August 29, 2014 Mintz Levin successfully obtained a recommendation for a Limited Exclusion Order against the remaining respondent, which chose to settle while Commission review of the Administrative Law Judge’s Initial Determination was pending.