Michael H. Jacobs

Partner
Washington, D.C.
mjacobs@crowell.com
Phone: +1 202.624.2568
1001 Pennsylvania Avenue NW
Washington, DC 20004-2595
English
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Michael H. Jacobs is a partner in the Intellectual Property Group in the firm's Washington, D.C. office and currently serves as the Group's vice-chair. He focuses on patent, trademark, trade secret, and copyright infringement litigation, post-grant patent proceedings, intellectual property portfolio management, patent procurement, counseling, and licensing.

Mr. Jacobs has litigated patent disputes before district courts throughout the United States, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board (formerly the Board of Patent Appeals and Interferences), the U.S. International Trade Commission, and the U.S. Court of Appeals for the Federal Circuit. Mr. Jacobs has extensive experience with post-issuance proceedings at the USPTO, managing all aspects of these cases from the pre-declaration stage through final judgment and appeal.

Mr. Jacobs' counseling work has involved assisting both large and small clients with the creation and implementation of intellectual property protection and procurement programs, as well as in evaluating infringement and validity issues for patentees and third parties. He has also worked with clients to develop creative solutions to managing intellectual property assets, including the development of portfolio-valuation tools.

Based on his professional and academic experiences, Mr. Jacobs has a broad and deep technical background. As an attorney, he has worked on matters involving digital and analog circuits and systems, Internet and other computer-software applications, video-display devices, wireless communications, polymers, catalytic chemistry, tissue grafts, fibroblast mitogenesis, aptamers, and various mechanical systems. Prior to attending law school, he worked as an engineer on technologies including sonar signal processing, biomedical signal processing and instrumentation, and computer-assisted tomography. Mr. Jacobs' research work included mathematical modeling of evoked potentials, analog circuit design, and image processing.

Mr. Jacobs previously served as an adjunct faculty member in the Department of Electrical and Computer Engineering at Villanova University. Since 1999, Mr. Jacobs has served on the faculty of The Johns Hopkins University, where he has taught courses in computer ethics for the Department of Computer Science, and intellectual property law and privacy for the Information Security Institute. Mr. Jacobs is a member of several professional organizations, including the American Bar Association, the American Intellectual Property Law Association, and the Intellectual Property Owners Association.

Mr. Jacobs was a Presidential Scholar at Villanova University, where he received his bachelor's degree in electrical engineering. He also has a master's degree in electrical engineering from Villanova and a master's degree in engineering and applied science from Yale University. Mr. Jacobs received his law degree from Georgetown University.

Representative Cases

  • LifeNet Health v. Life Cell Corp., No. 2:13-cv-00486 (E.D. Virginia): Represented plaintiff LifeNet in patent-infringement action involving soft-tissue grafts. Jury awarded LifeNet over $34 million; decision affirmed on appeal.
  • Beckmann v. Gandhi, Interference No. 105,822 (PTAB), No. 2015-1765 (Fed. Cir.): Representing junior party Beckmann (on behalf of Daimler AG) in patent interference; case is currently on appeal.
  • Bandl-Konrad v. Gandhi, Interference No. 105,839 (PTAB), No. 2014-1087 (Fed. Cir.): Represented junior party Bandl-Konrad (on behalf of Daimler AG) in patent interference. Obtained judgment in Bandl-Konrad’s favor in PTAB; prevailed on appeal to U.S. Court of Appeals for the Federal Circuit.
  • GE Lighting Solutions, LLC. v. Farlight, LLC, IPR 2014-00323 (PTAB): Represented petitioner GE Lighting Solutions in inter partes review of U.S. Patent No. 8,220,959.
  • Digitech Image Technologies, LLC v. Leica Camera AG and Leica Camera Inc., Nos. 8:12-cv-1153-ODW-MRW and 8:12-cv-1677-ODW-MRW (C.D. California): Represented Leica Camera defendants in a patent infringement action related to digital cameras.  Secured dismissal of initial case under 35 U.S.C. § 299.
  • E.I. du Pont de Nemours and Company v. Kolon Industries, Inc., et al., No. 3:09-cv-58 (E.D. Virginia). Represented plaintiff DuPont in case alleging misappropriation of over 100 trade secrets relating to KEVLAR® fiber technology in one of the largest trade secret misappropriation cases in the United States. Obtained a $919 million verdict against Kolon for the theft of KEVLAR® technology after a seven-week jury trial held in Richmond, Virginia.
  • Wix Filtration Corp. LLC v. Purolator Filters NA LLC, No. 3:11-CV-289 (W.D. North Carolina): Represented defendant Purolator in patent-infringement action involving automotive air filters.
  • Rembrandt Data Technologies, LP v. Canon U.S.A., Inc., et al., No. 1:08-CV-1009 (E.D. Virginia); No. 2010-1002 (Fed. Cir.). Represented Canon entities in patent-infringement action involving fax modem technology. Won on summary judgment in district court; judgment affirmed by the Federal Circuit.
  • Flashpoint Technology, Inc. v. Leica Camera AG, No. 08-00139 (D. Delaware). Represented Leica entities in action involving camera technology.
  • In re Certain Machine Vision Software, Machine Vision Systems, and Products Containing Same, ITC Investigation No. 337-TA-2666, and Cognex Corp. v. Fuji America Corp., No. 08-10857 (D. Massachusetts). Represented Fuji Machine Manufacturing Co., Ltd. and Fuji America Corp. in actions involving software for machine-vision systems.
  • Linex v. Nortel et al., No. 05-80300 (S.D. Florida). Representing defendant in patent infringement action involving distributed telecommunications network using spread-spectrum modulation.
  • Nextel Communications v. Motorola, Opposition Nos. 91/161,817 and 91/164,353 (TTAB). Represented telecommunications company in trademark oppositions relating to use and distinctiveness of sound marks. Decisions issued in Nextel's favor in both matters.
  • SomaLogic, Inc. v. Santa Coloma, Interference No. 105,493 (BPAI). Represented patent applicant in interference directed to methods of obtaining aptamers.
  • ZymoGenetics v. Ludwig Institute for Cancer Research, Interference No. 105,433 (BPAI). Represented patent applicant in interference directed to fibroblast mitogenesis.
  • Rossin v. Kanno, Interference Nos. 105,402 and 105,512 (BPAI). Represented Hitachi, Ltd. in interferences directed to abatement of perfluorinated compounds.
  • Johnson v. Heine, Interference No. 105,310 (BPAI). Represented Unaxis Balzers AG in interference directed to color-separation technology for video displays.
  • Rowells v. Vichinsky, Interference No. 105,518 (BPAI). Represented Mann & Hummel GmbH in interference directed to fuel rail for intake manifold of internal combustion engine.

Affiliations

Admitted to practice: District of Columbia; Pennsylvania; Virginia; U.S. Courts of Appeals for the Third, Fourth, District of Columbia, and Federal Circuits; and U.S. District Courts for the District of Columbia and the Eastern and Western Districts of Virginia. Registered to practice: U.S. Patent and Trademark Office (USPTO).



Highlights, News & Knowledge

Speeches & Presentations

  • "Recent Developments in U.S. Patent Litigation and Prosecution," FRONTEO Seminar, Tokyo, Japan (July 25, 2019). Presenters: Brian Paul Gearing and Michael H. Jacobs.
  • "GDPR – What’s Next for U.S. Privacy Laws?" 5th Annual Cybersecurity Conference for Executives, Baltimore, Maryland (March 13, 2019). Panelist: Michael H. Jacobs.
  • "IP Basics for Health Tech," INOVA 2018 Discovery Series: Early Stage Investing in Health Technology, Fairfax, VA (June 21, 2018). Presenters: Lisa A. Adelson and Michael H. Jacobs.
  • "Intellectual Property Enforcement Tools for Cybercrime," 4th Annual Cyber Security Conference for Executives: Emerging Global Cyber Threats, John's Hopkins University, Baltimore, MD (September 19, 2017). Presenter: Michael H. Jacobs.
  • “Litigation Tips for Patent Prosecutors (and Prosecution Tips for Litigators),” National Association of Patent Practitioners 2017 Annual Meeting & Conference, San Jose, CA (July 28, 2017). Presenter: Michael H. Jacobs.
  • "3D Bioprinting and Intellectual Property Considerations," Bloomberg BNA Webinar (March 16, 2017). Presenters: Lisa A. Adelson and Michael H. Jacobs.
  • “Enforcement of Design Protection in View of the Popularization of 3D Printing,” XXXVI Congresso Internacional da Propriedade Intelectual – ABPI (XXXVI International Congress on Intellectual Property – ABPI), São Paulo, Brazil (August 30, 2016). Co-Presenter: Michael H. Jacobs.
  • "New gTLDs: After the Reveal Day," The Bar Association of the District of Columbia: Patent, Trademark, & Copyright Section, Washington, DC (December 5, 2012). Presenters: Michael H. Jacobs, Elisa Cooper, Mary R. Bram, and Ronald L. Sigworth (Moderator)
  • "New gTLDs: After the Reveal Day," Virginia State Bar Intellectual Property Section Fall CLE Weekend, Alexandria, Virginia (September 22, 2012). Presenters: Dickerson M. Downing, Michael H. Jacobs, and Mary R. Bram.
  • "Alternative Dispute Resolution in Intellectual Property Cases," Federation of Industries of the State of Rio Grande do Sul (FIERGS), Porto Alegre, Brazil (July 13, 2012). Presenters: Dickerson M. Downing, Michael H. Jacobs, and Mary R. Bram.
  • "I Seminário Brasil - EUA: A Propriedade Intelectual da Empresa na Internet," (Seminar U.S. - Brazil: A Company's Intellectual Property on the Internet), Hotel Grand Hyatt, São Paulo, Brazil (July 11, 2012). Presenters: Dickerson M. Downing, Michael H. Jacobs, and Mary R. Bram.
  • "Intellectual Property Issues in Employment Law," Virginia State Bar Intellectual Property Section, 22nd Annual IP Fall CLE Weekend Seminar, Williamsburg, VA (October 2010). Co-Presenter: Michael H. Jacobs.
  • "Copyright and Other Traps," Women in Government Relations Seminar on "Using Emerging Media to Power Your Grassroots, PAC, and Public Affairs Efforts," Washington, DC (April 2009). Presenter: Michael H. Jacobs.
  • "Patent Reform in the United States: The Potential Consequences," Webcast to Australian IP Attorneys (October 2008). Presenter: Michael H. Jacobs.
  • "Strategic Advice in the Aftermath of KSR Int’l Co. v. Teleflex Inc.," Japanese Patent Attorneys Association, Tokyo, Japan (October 2007). Presenter: Michael H. Jacobs.
  • "Finding and Managing Corporate Intellectual Property Assets," 68th Annual Virginia State Bar Meeting, Virginia Beach, VA (June 2006). Co-Presenter: Michael H. Jacobs.
  • "Creating and Receiving Value for Your Secrets," Crowell & Moring Trade Secrets Law Seminar (October 2004). Co-Presenter: Michael H. Jacobs.

Publications

  • "Diligent and Skilled: The Changing Standard for IPR Estpoppel," IP Litigator (June 22, 2020). Authors: Zach Ruby, Brian Paul Gearing, and Michael H. Jacobs.
  • "Litigation Forecast 2016: What Corporate Counsel Need to Know for the Coming Year," a Crowell & Moring LLP publication (January 2016). Contributor.
  • "Intellectual Property - Time to Play Offense," Crowell & Moring's Litigation Forecast 2016 (January 2016). Contributor: Michael Jacobs.
  • "Recent Decisions of the United States Court of Appeals for the Federal Circuit, No. 21," International Legal Strategy, pp. 84-88 (November 2000). Co-Author: Michael H. Jacobs.
  • "Recent Decisions of the United States Court of Appeals for the Federal Circuit, No. 6," International Legal Strategy, pp. 82-87 (August 1999). Co-Author: Michael H. Jacobs.
  • "Now It's Easier to Tell No Tales from Japan," Legal Times Special Report on Intellectual Property, pp. 25-29 (April 12, 1999). Co-Author: Michael H. Jacobs.
  • "Parametric Modeling of Somatosensory Evoked Potentials," IEEE Transactions on Biomedical Engineering, vol. BME-36, pp. 392-403 (March 1989). Authors: Michael H. Jacobs, S. S. Rao, and Gregory V. José.

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