Michael Jacobs is the co-founder of the firm's Intellectual Property Practice Group. Mr. Jacobs concentrates his practice on litigation of high-technology and intellectual property matters. He has represented information technology and life sciences companies in over 35 patent lawsuits, often prevailing at early stages of the dispute. He has also handled numerous high-profile arbitrations, several of which involved the interplay between arbitration and court proceedings.
Mr. Jacobs' work in several landmark cases has helped to shape the laws governing emerging technologies. Early in his career, he led the technical team that represented Fujitsu in its landmark operating system software arbitration with IBM. He represented Novell in the widely-reported
SCO v. Novell litigation. After a three-week trial in the case in March 2010, the jury affirmed Novell's ownership of the UNIX software code and rejected SCO's claim for damages of hundreds of millions of dollars. The 10th Circuit Court of Appeals affirmed the district court's judgment. He currently represents Oracle in its intellectual property dispute with Google over the Android operating system.
Mr. Jacobs has twice won the California Lawyer Attorneys of the Year (CLAY) award, one for his advocacy on behalf of Intel in the Intel v. Hamidi "trespass to chattels" case and this year for his defense of Novell in
SCO v. Novell.
Representative Matters
- Elan Pharma International Limited v. Abraxis Bioscience (Distrcit of Delaware). Represented Abraxis BioScience, Inc., in defending its lead product, Abraxane, against claims by Elan Pharmaceutical International, Ltd., of infringing Elan's patents for coated nanoparticles used to deliver paclitaxel for the treatment of metastatic breast cancer. This was the first nanotechnology patent case taken to jury trial. The case was settled in 2011.
- Neuralstem v. Reneuron (Central District of California). Represented U.K.-based defendant in trade secret and material transfer agreement dispute involving stem cell technology. Case settled shortly before trial.
- SCO Group v. Novell (District of Utah). Prevailed in three-week jury trial in Salt Lake City when a jury determined that Novell owned the copyrights to the UNIX computer operating system. (2010) In an earlier trial, won multi-million dollar award for Novell based on its right to royalty payments from UNIX software licenses granted by SCO. (2008)
- Media Queue v. Netflix (Northern District of California). Defeated plaintiff on summary judgment in patent infringement lawsuit related to the Netflix DVD "queue." Currently representing Netflix in plaintiff's Federal Circuit appeal.
- Monec v. Apple (Eastern District of Virginia). Defeated plaintiff on summary judgment in patent infringement lawsuit related to iPhone. Case resolved while plaintiff's Federal Circuit appeal was pending.
- Autodesk v. SolidWorks (Northern District of California). Represented Autodesk in trademark infringement action relating to protectibility of Autodesk's "DWG" mark. Obtained consent judgment of trademark validity as part of settlement.
- Notal v. Carl Zeiss Meditec (AAA/ICDR). Won nearly $10M award for plaintiff in opthamologic medical equipment dispute.
- TAP v. QLT (Northern District of Illinois). Settled case in damages phase after liability was established under previous counsel in resorbable polymer patent infringement action brought against client QLT, a biopharmaceutical company.
- Discovery Communications v. Amazon.com (District of Delaware). Representing Discovery Communications in a patent infringement suit against Amazon.com alleging infringement by Amazon's Kindle Discovery's patents for e-book reader technology.
- Vernor v. Autodesk (Western District of Washington; Ninth Circuit). Represented Autodesk in Ninth Circuit appeal of a ruling regarding software licensing and the first-sale doctrine under copyright law. Brought in to defend Autodesk after motion to dismiss was denied. In October 2011, the U.S. Supreme Court denied Vernor's cert petition, preserving the Ninth Circuit court's ruling.
- Fantasy Sports Properties v. Yahoo! (Eastern District of Virginia; Federal Circuit). Prevailed on Federal Circuit appeal after winning early motion for summary judgment of non-infringement on behalf of Yahoo! in patent infringement suit involving computerized fantasy football games. Successfully represented and currently representing Yahoo! in other patent infringement actions.
- Minebea Co. v. Think Outside (Southern District of California; Federal Circuit). Won affirmance in the Federal Circuit of summary judgment victory on behalf of portable keyboard designer Think Outside in a patent infringement action involving Think Outside's stowaway portable keyboard.
- Autodesk Canada Co. v. Assimilate, Inc. (District of Delaware). Currently representing Autodesk in copyright infringement suit concerning visual effects editing software. Autodesk purchased the intellectual property to the software from an English company in bankruptcy. Autodesk later discovered that one of the principal programmers of the software had improperly retained a copy of the source code, started his own company, and begun selling a visual effects editing program with a suspiciously similar user interface.