There is a story behind every patent, trademark, and copyright. Telling that story persuasively, strategically, and in a way that resonates with adjudicators and other decision-makers has facilitated Michael Zinna’s success as an IP litigator and counselor.
Particularly accomplished on patent matters and disputes, but equally adept with all other IP matters, Mike thrives operating within the creative and innovative space that is intellectual property law, and he enjoys helping each client realize their specific vision for their company and brand.
Clients appreciate Mike’s ability to take IP assets from concept to market, his vigilance in protecting them, his aptitude for maximizing their value, and his effective advocacy when asserting clients’ rights in contested proceedings or defending clients against allegations of infringement by third parties.
Mike’s experience includes complex patent litigation, patent licensing, due diligence, patent clearance, design around strategies, and managing domestic and international patent portfolios. He litigates IP cases in federal courts around the country.
Mike also represents patent holders and challengers in post-grant review proceedings before the U.S. Patent Trial and Appeal Board. His ability to take complex technical concepts and translate them into compelling and understandable narratives provides his clients with strategic advantages in litigation, during prosecution, and beyond.
Michael is known for his expertise in litigating efficiently without sacrificing strategic objectives. In addition to his patent docket, Mike brings his robust advocacy skills to trademark, trade dress, copyright, and unfair competition litigation. He advises clients on branding strategy, evaluates trademark searches, and procures trademarks domestically and internationally. Mike’s 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.
Clients from a wide range of industries rely on Mike’s counsel, including media and entertainment, medical devices, fashion, luxury goods, beauty, consumer products, transportation and logistics, energy, and hospitality. He also has extensive experience negotiating against patent non-practicing entities (NPEs).
A frequent and well-received speaker before trade associations, clients, and industry groups on intellectual property issues, Mike is also an authority on how to handle complex litigation efficiently—he is the author of “Techniques for Expediting and Streamlining Litigation” in Thomson-Reuter’s Business and Commercial Litigation in Federal Courts. He has been recognized as a leading practitioner by US Legal 500 for his work in Intellectual Property from 2016-2019 and 2022-2023.
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.
Recognized as a leading practitioner by US Legal 500, a Legalease Publication, for his work in the Intellectual Property: Trademarks Litigation, 2016-2019 and 2022-2023 and Intellectual Property: Trademarks Non-Contentious, 2016, 2018 and 2022-2023. A description of the selection methodology can be found at www.legal500.com/assets/pages/about-us/how-it-works.html#rank.
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