Kelley Drye

Attorneys & Professionals 

Michael J. Zinna

Partner Email vCard
Parsippany
Phone: (973) 503-5964
Fax: (973) 503-5950
New York
Phone: (212) 808-7964
Fax: (212) 808-7897

Michael Zinna is a partner in the firm’s Parsippany and New York offices. Mr. Zinna’s practice comprises all aspects of intellectual property, with a focus on patent matters including complex patent litigation, patent licensing, due diligence, patent clearance, design around strategies, and the management of domestic and international patent portfolios. Mr. Zinna also represents patent holders and patent challengers in post-grant review proceedings before the U.S. Patent Trial & Appeal Board (PTAB).

In addition to his patent docket, Mr. Zinna litigates trademark, trade dress, copyright and unfair competition cases. He advises clients on branding strategy, evaluates trademark searches, and procures trademarks domestically and internationally. His trademark experience also includes opposition and cancellation proceedings before the U.S. Trademark Trial & Appeal Board (TTAB). He also attends to U.S. copyright filings and drafts IP-related agreements.

Mr. Zinna advises clients in a wide range of industries. His clients include media and entertainment, fashion, luxury goods, consumer products and medical device companies. He has extensive experience representing his fashion and retail clients in litigation and licensing negotiations with patent non-practicing entities (NPEs).

Mr. Zinna lectures in front of trade associations, clients and industry groups on intellectual property issues and has been recognized for helping clients understand and interpret complex technological issues in an approachable way.

Mr. Zinna has been selected to the Intellectual Property - Trademarks Litigation and Trademarks Non-Contentious lists by US Legal 500, a Legalease Publication. A description of the selection methodology can be found at www.legal500.com/assets/pages/about-us/how-it-works.html#rank. He has also been selected numerous times for inclusion in the New Jersey Super Lawyers’ lists, issued by Thomson Reuters. A description of the selection methodology can be found at www.superlawyers.com/about/selection_process.html. (No aspect of this advertisement has been approved by the Supreme Court of New Jersey).

Representative Experience
Litigation

Obtained a jury verdict of patent invalidity in the U.S. District Court for the District of Delaware for a specialty retailer of personal care products accused of infringing a patent related to antimicrobial moisturizing lotion. This was the first trial victory for a defendant in a patent case in this district in over a year. Obtained an affirmance of the jury verdict on appeal at the U.S. Court of Appeals for the Federal Circuit.

Represented a media and entertainment company in a patent infringement lawsuit involving data security technology in the U.S. District Court for the Eastern District of Texas. Negotiated a confidential settlement favorable to client prior to discovery. 

Obtained summary judgement of non-infringement for a defendant lingerie, personal care, beauty, apparel and accessories company in a patent infringement lawsuit related to processing electronic data using applets in the U.S. District Court for the Eastern District of Texas.

Represented a defendant specialty retailer of home fragrance products in a patent infringement lawsuit involving candle tins in the U.S. District Court for the Northern District of Illinois. On appeal, obtained a finding of non-infringement and invalidity at the U.S. Court of Appeals for the Federal Circuit, which led to a full reversal of the district court’s infringement and validity findings. 

Defended a leading manufacturer of grilling products in a patent infringement case involving wireless thermometer technology in the U.S. District Court for the District of New Jersey. After successfully stalling the case due to Plaintiff’s failure to name necessary parties, obtained a settlement and dismissal on terms favorable to client.  

Represented plaintiff steel manufacturer in a trademark infringement case filed in U.S. District Court for the Northern District of Ohio. Obtained a confidential settlement favorable to client prior to discovery. 

Represented an artist in a copyright lawsuit in the U.S. District Court for the District of New Jersey, whose painting had been misappropriated and screened onto products, including apparel, tableware and light fixtures. Obtained a confidential settlement favorable to client prior to discovery. 

U.S. Patent Trial & Appeal Board

Represented several media and entertainment companies as Petitioners before the U.S. Patent Trial & Appeal Board in inter partes review (IPR) proceedings of a patent directed to media session transfer technology. Obtained institution of IPR on all challenged patent claims, and a stay of the parallel district court litigation filed in the District of Delaware against his clients pending the outcome of the IPR.

Patent Non-practicing Entities (NPEs)

Litigated against and negotiated with dozens of patent NPEs, including

  • ArrivalStar/Melvino Technologies (vehicle monitoring and notification systems);
  • Autoscribe Corp./Pollin Patent Licensing (check-by-phone payment systems);
  • Clear with Computers (electronic proposal preparation systems and computer-assisted sales methods);
  • Cordance Corp. (e-commerce express checkout functionality);
  • Data Carriers (auto-complete online search functionality);
  • Eclipse IP (e-commerce notification technology);
  • eDekka (e-commerce shopping cart technology);
  • GeoTag (store locator technology);
  • Helferich Patent Licensing (short message service technology);
  • Innovatio IP Ventures (WiFi technology);
  • Landmark Technology (searching for and ordering products electronically);
  • Parallel Networks (transferring dynamic web page generation requests from a web server to an application server);
  • Pragmatus Telecom (Internet live chat technology);
  • Princeton Digital Image Corp. (JPEG image encoding);
  • Qommerce Systems (e-commerce technology);
  • SFA Systems (computerized sales force automation);
  • Leon Stambler (SSL authentication and encryption);
  • Walker Digital (“you may also like” e-commerce substitute product functionality);
  • Paul Ware/Financial Systems Innovation (fraud prevention technology);
  • Webvention (online mouse-over preview technology).
Portfolio Management and Advice

Provided strategic advice and management of the worldwide patent and trademark portfolio for a client innovating in the treatment of and operation on the body’s distal extremities.

Obtained design patents related to accessories, fragrance packaging and other goods for a world-renowned luxury apparel, beauty and accessories company.

Managed the worldwide enforcement of trade dress rights for emerging luxury handbag and shoe designer in its highly sought after handbags.

Formulated and executed an international patent procurement campaign consisting of design and utility patents for a famous confectionary company.

Negotiated multiple trademark consent agreements for a client in the organic food industry.

Honors & Awards

In 2016, Mr. Zinna was listed in the Intellectual Property - Trademarks Litigation and Trademarks Non-Contentious areas by US Legal 500, a Legalease Publication. A description of the selection methodology can be found at www.legal500.com/assets/pages/about-us/how-it-works.html#rank.

He was selected for inclusion in the 2011-2014 New Jersey Super Lawyers’ Rising Stars lists, issued by Thomson Reuters. A description of the selection methodology can be found at www.superlawyers.com/about/selection_process.html.

No aspect of this advertisement has been approved by the Supreme Court of New Jersey.

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Publications
All

December 2016

Techniques for Expediting and Streamlining Litigation

Business and Commercial Litigation in Federal Courts (4th Ed. 2016)

Events
All

January 19, 2017

In Fashion: 2017 Kelley Drye Fashion & Retail Law Summit

Kelley Drye Fashion & Retail Law Summit