Many of the world's leading technology and life sciences companies call on Michael Jacobs to lead trial teams in their most complex litigation. He served as co-lead counsel in two of the most-watched intellectual property battles of recent memory, including a high-profile smartphone case leading to a jury verdict of over $1 billion. And the life sciences industry’s first and most successful biotechnology company looks to Mr. Jacobs when patent and licensing disputes arise. Chambers calls him a “real star” and a “pillar of the Silicon Valley patent litigation community.” Clients have described him as “simply outstanding… he is a superb writer and strategist, as well as super-smart and articulate in court.” Mr. Jacobs co-founded the firm's Intellectual Property Practice Group, currently heads its Life Sciences Practice Group, and co-chairs the Intellectual Property Litigation Practice Group.
Mr. Jacobs is listed in Band 1 by Chambers USA 2015 in its California Intellectual Property category and in Chambers Global 2015 as a leading attorney for Intellectual Property. He was listed from 2012-2014 among the top attorneys in The BTI Client Service All-Star MVP, nominated by clients and selected for consistent outstanding client service.
Mr. Jacobs has won the California Lawyer Attorneys of the Year (CLAY) award three times, first for his advocacy on behalf of Intel in the Intel v. Hamidi “trespass to chattels” case, in 2012 for his defense of Novell in SCO v. Novell, and in 2014 for his work on a billion dollar smartphone trial. He also has twice been named “Litigator of the Week” by The American Lawyer, once for his victory in the Novell case and, in September 2012, for his victory in a billion dollar smartphone trial in the Northern District of California. He has been recognized as a “Life Sciences Star” by LMG Life Sciences in 2014 and was selected by his peers for inclusion in the 2006–2016 Best Lawyers in America lists. In 2014, he was included on the Daily Journal’s list of the top 100 lawyers in California.
Mr. Jacobs' work in several landmark cases has helped to shape the laws governing emerging technologies. Early in his career, he led the technical team that represented Fujitsu in its landmark operating system software arbitration with IBM. He represented the motion picture industry in the On Command Video case, which established that on-demand video systems require a license under copyright’s public performance right. Mr. Jacobs represented Novell in the widely reported SCO v. Novell Linux litigation, prevailing in a bench trial on Novell’s multi-million dollar claims, defeating SCO’s $200 million claim in a three-week jury trial, and defending those results on appeal in the 10th Circuit. He also represented Autodesk in the Vernor v. Autodesk case, which established that copyright’s first sale doctrine does not immunize the re-sale of licensed software.
In addition, he has represented leading life sciences companies in their cutting edge litigation, including Genentech in its patent dispute with Phigenix concerning Genentech’s blockbuster drug, Kadcyla, Washington University in St. Louis in life sciences patent and licensing disputes, Chiron in its HCV protease litigation, and Abraxis in its nanoparticle anticancer treatment dispute with Elan Pharma. He has also handled numerous high-profile arbitrations, several of which involved the interplay between arbitration and court proceedings.
Mr. Jacobs has also achieved victories in important pro bono cases. He was co-lead counsel for plaintiffs in the landmark Williams v. State of California class action, which led to a settlement in which the State undertook to address shocking conditions in California’s lowest performing schools. He also represented the Jewish Community Relations Council and the Anti-Defamation League in a successful pre-election challenge to an anti-circumcision initiative slated for San Francisco’s ballot.
Mr. Jacobs routinely speaks on cutting-edge intellectual property issues. For example, for the last several years he has participated in the Federal Judicial Center-Berkeley Center for Law & Technology’s education program for federal judges.
Co-lead counsel in a high-profile smartphone case leading to a jury verdict of over $1 billion.
Microscan Systems, Inc. v. Cognex Corporation
(Southern District of New York). Won a jury verdict of infringement, validity, and reasonable royalty damages for plaintiff Microscan in a patent case related to high-end barcode scanners.
SCO Group v. Novell
(District of Utah, Tenth Circuit). Prevailed in three-week jury trial in Salt Lake City against SCO’s “slander of title” claims involving the UNIX and Linux operating systems when a jury determined that Novell owned the UNIX copyrights. (2010) In an earlier bench trial, won multi-million dollar award for Novell based on its right to royalty payments from UNIX software licenses granted by SCO. (2008) Successfully defended verdicts in 10th Circuit appeal. (2011)
eTool v. National Semiconductor
(Eastern District of Texas). Defeated plaintiff’s claim of patent infringement involving National Semiconductor’s online circuit design tool on summary judgment. Case settled in 2012 after defeating plaintiff’s motion for reconsideration.
Juniper Networks, Inc. v. Palo Alto Networks, Inc.
(District of Delaware). Lead counsel for Palo Alto Networks in case related to firewall technology with chief rival Juniper Networks. After a two-week trial, a mistrial was declared because the jurors were unable to reach a verdict. Shortly thereafter, the case and related litigation were settled on favorable terms with a cross-license agreement and covenant not to sue.
Oracle v. Google
(Northern District of California). Lead counsel for Oracle America in an action for copyright and patent infringement based on Google’s inclusion of Java platform technology in the Android software platform and operating system.
Phigenix, Inc. v. Genentech, Inc.
(Northern District of Georgia). Lead counsel in patent infringement suit alleging that Genentech’s Kadcyla infringes a Phigenix patent.
Washington University v. Wisconsin Alumni Research Foundation
(District of Delaware). Lead counsel for Washington University in dispute involving proper valuation of a co-owned patent covering a blockbuster Vitamin D kidney disease treatment.
Elan Pharma International Limited v. Abraxis BioScience
(District of Delaware). Represented Abraxis BioScience in defending its lead product, Abraxane, against claims by Elan Pharmaceutical of infringing Elan’s patents for coated nanoparticles used to deliver paclitaxel for the treatment of metastatic breast cancer. This was the first nanotechnology patent case taken to jury trial. The case settled in 2011.
Vernor v. Autodesk
(Western District of Washington; Ninth Circuit). Represented Autodesk in case regarding software licensing and the first-sale doctrine under copyright law. Brought in to defend Autodesk after motion to dismiss was denied. On appeal, the Ninth Circuit reversed the district court and held that the first sale doctrine does not apply to licensed software.
Autodesk v. SolidWorks
(Northern District of California). Represented Autodesk in trademark infringement action relating to protectibility of Autodesk’s “DWG” mark. Obtained consent judgment of trademark validity as part of settlement.
Notal v. Carl Zeiss Meditec
(AAA/ICDR). Won nearly $10M award for plaintiff in ophthalmologic medical equipment dispute.
TAP v. QLT
(Northern District of Illinois). Settled case in damages phase after liability was established under previous counsel in resorbable polymer patent infringement action brought against client QLT, a biopharmaceutical company.
Discovery Communications, Inc. v. Amazon.com, Inc.
(District of Delaware). Represented Discovery Communications in a patent infringement suit against Amazon.com alleging infringement by Amazon’s Kindle of Discovery’s patents for e-book reader technology. The case settled after a favorable claim construction ruling.
Neuralstem v. Reneuron
(Central District of California). Represented U.K.-based defendant in trade secret and material transfer agreement dispute involving stem cell technology. The case settled shortly before trial.
Fantasy Sports Properties v. Yahoo!
(Eastern District of Virginia; Federal Circuit). Prevailed on behalf of Yahoo! on Federal Circuit appeal after winning early motion for summary judgment of non-infringement in patent infringement suit involving computerized fantasy football games. Successfully represented and currently representing Yahoo! in many other patent infringement actions.
Minebea Co. v. Think Outside
(Southern District of California; Federal Circuit). Won affirmance in the Federal Circuit of summary judgment victory on behalf of Think Outside in a patent infringement action involving the “Stowaway” portable keyboard.
Media Queue v. Netflix
(Northern District of California). Defeated plaintiff on summary judgment in patent infringement lawsuit related to the Netflix DVD “queue.”