Michael Zinna’s practice comprises all aspects of intellectual property, with a focus on patent matters and including complex patent litigation, patent licensing, due diligence, patent clearance, design around strategies, and the management of domestic and international patent portfolios. Michael also represents patent holders and patent challengers in post-grant review proceedings before the U.S. Patent Trial and Appeal Board.
In addition to his patent docket, Michael 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 and Appeal Board. In addition, he attends to U.S. copyright filings and drafts IP-related agreements.
Michael advises clients involved in a wide range of industries, such as media and entertainment, fashion, luxury goods, consumer products and medical devices. He has extensive experience representing fashion and retail clients in litigation and licensing negotiations with patent non-practicing entities (NPEs).
Michael is known for his expertise in litigating efficiently without sacrificing strategic objectives. He is the co-author of “Techniques for Expediting and Streamlining Litigation” in Thomson-Reuter’s Business and Commercial Litigation in Federal Courts. Michael thrives in the creativity and innovation of intellectual property law and practice, and personally enjoys helping each client to realize their specific vision for their company, and is truly valued for his ability to take an innovation from idea to reality, and beyond. As a result, Michael is a frequent and well-received speaker/educator before 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. Michael was named a “Rising Star” by New Jersey Super Lawyers from 2011–2014.
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 judgment 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 and Appeal Board
Represented several media and entertainment companies as petitioners before the U.S. Patent Trial and 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. Technologies have included:
- Vehicle monitoring and notification systems
- Check-by-phone payment systems
- Electronic proposal preparation systems and computer-assisted sales methods
- E-commerce express checkout functionality
- Auto-complete online search functionality
- E-commerce notification technology
- E-commerce shopping cart technology
- Store locator technology
- Short message service (SMS) technology
- WiFi technology
- Searching for and ordering products electronically
- Transferring dynamic web page generation requests from a web server to an application server
- Internet live chat technology
- JPEG image encoding
- Computerized sales force automation
- SSL authentication and encryption
- “You may also like” e-commerce substitute product functionality
- Fraud prevention technology
- 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.
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.
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