Michael L. Kiklis
Mike Kiklis leverages his 25 years of experience in providing representation to clients in his areas of focus: patent litigation and trials at the USPTO Patent Trial and Appeal Board (PTAB). He has been involved in approximately 100 PTAB trials, serving as lead counsel in the vast majority of those cases. He also handles appeals to the Federal Circuit from his cases, having now been involved in over 20 appeals. He both enforces and defends the intellectual property rights of his clients, and is often called upon to handle cases worth more than $100 million.
Mike brings an in-depth understanding of the business and IP needs of his technology clients, which he developed from years of experience in virtually every kind of patent matter, from cross-licensing and due diligence to bet-the-company PTAB trials and patent litigation. Mike has an extensive background in computer science based on his prior work as a software developer at some of the computer industry’s leading companies.
Mike works with leaders at technology-based companies to navigate through various degrees of patent disputes. His practice includes:
- PTAB Litigation – Serving as lead counsel in inter partes review and covered business method patent review proceedings, and coordinating concurrent or multiple proceedings related to the same patent.
- Patent Litigation – Representing clients to enforce and defend their intellectual property rights related to patent infringement in alternative dispute resolution forums, district courts, and the Federal Circuit.
Mike provides significant and influential thought leadership as a frequent speaker and author on patent law, including patentable subject matter and PTAB trials. He is also the author of The Supreme Court on Patent Law, an 800-page treatise devoted to the Supreme Court’s patent law jurisprudence.
Memberships
American Bar Association
American Intellectual Property Law Association (AIPLA)
Intellectual Property Owners Association (IPO)
Boston University, The Metropolitan College Dean’s Advisory Board Member
Representative Experience
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Represented Life Technologies Corp. in a Federal Circuit Appeal stemming from a 2017 Patent Trial and Appeal Board (PTAB) decision in a covered business method proceeding (CBM). Michael Kiklis represented Life Technologies in two covered business method proceedings: one was filed in 2014 and the other was filed in 2015. Life Technologies prevailed in both proceedings with the PTAB finding that all challenged claims of Unisone Strategic IP Inc.’s inventory management patent recited ineligible subject matter pursuant to 35 U.S.C. § 101. This appeal involved the second CBM. Unisone chose not to appeal the first CBM. The Federal Circuit heard oral argument on December 4, 2018, and then affirmed the PTAB’s decision less than one week later.
Additional Experience
- Counsel in approximately 100 inter partes review (IPR) and covered business method patent review proceedings at the USPTO’s Patent Trial and Appeal Board, serving as lead counsel in over 70. As an example, Mike served as lead counsel in a group of 24 related IPRs. Many of Mike’s cases involve a co-pending proceeding, such as at the district court or at the Federal Circuit.
- Represented a software company in the successful enforcement of its patent against virtually an entire industry of over thirty companies — including Microsoft and IBM — in two patent litigations in the Eastern District of Texas, resulting in favorable settlement.
- Represented a major computer company in its landmark antitrust case against Microsoft, resulting in a $1.95 billion settlement.
- Co-counsel on the first Covered Business Method Patent Proceeding filed at the USPTO’s Patent Trial and Appeal Board.
- Represented a national organization of legal professionals as co-author of a Supreme Court amicus brief in Bilski & Warsaw v. Kappos.
- Represented a financial services company in defense of a claim of patent infringement on a business method patent, resulting in a favorable settlement.
- Represented a trade association as co-author of a Supreme Court amicus brief in Quanta Computer, Inc. v. LG Electronics, Inc.
- Represented several large software/computer companies in cross-licensing negotiations with IBM and other high technology companies.
- Represented a large computer company as opinion counsel in defense of a software patent infringement case where over $1 billion was at stake; the plaintiff dropped its willfulness claim.
Publications
Upcoming Events
Past Events
Media Mentions & Firm News
Additional News & Insights
Publications
- The Supreme Court on Patent Law, Wolters Kluwer Law & Business (2014-2015)
- Post-Grant Proceedings Before the Patent Trial and Appeal Board, Practising Law Institute, Co-author (2013-2015)
Speaking Engagements
- “Drafting and Defending Software Patents to Survive Section 101 and AIA Challenges,” Strafford Publications Webinar (July 2018)
- Invited speaker, Supreme Court Patent Law, Judge Pauline Newman IP Inn of Court (September 2016)
- Invited speaker, Subject Matter Eligibility, All Ohio Annual Institute on Intellectual Property (September 2016, Cleveland and Cincinnati)
Accolades
Intellectual Asset Management (IAM) Patent 1000: The World’s Leading Patent Practitioners – (2014-2018)
IP STARS – Patent Star (2013-2018)
Boston University Metropolitan College Computer Science Distinguished Alumni Award
Patent and Trademark Office Society’s Rossman Award