Michael A. Jacobs

Partner | San Francisco
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(415) 268-7455
I draw energy and inspiration from my clients’ cutting-edge work in the life sciences and technology sectors. We collaborate and innovate to win their cases, just as my clients do to advance science and technology.

Experience

(ICDR Arbitration and Eastern District of Texas). Serves as lead counsel for plaintiff Seagen (f/k/a Seattle Genetics) in an antibody-drug conjugate contractual ownership arbitration and an infringement action involving patents infringed by Daiichi’s Enhertu treatment.

(District of Delaware). After an eight-year battle, obtained at trial and defended on appeal a nearly $50 million judgment against WARF. The case arose out of an inter-institutional agreement between University of Wisconsin and Washington University. He successfully established that WARF undervalued the patent.

(District of New Jersey). Obtained a walk-away settlement of patent infringement claims brought by Nasdaq against IEX, the exchange made famous by Michael Lewis’s book, Flash Boys: A Wall Street Revolt.

(Northern District of California). Successfully defended Uber against a patent infringement lawsuit involving driver location mapping, obtaining summary judgment and dismissal of the appeal.

(Northern District of California). Successfully defended Nevro’s exclusivity in high-frequency spinal cord stimulation in a patent infringement suit against Boston Scientific.

(District of Delaware). Obtained a rare preliminary injunction barring Stimwave from infringing Nevro’s patents on high-frequency spinal cord stimulation therapy. The case settled the following year with a stipulated permanent injunction.

(Northern District of California). Obtained award of attorneys’ fees for Genentech against Phigenix after defeating Phigenix’s patent infringement claim against Genentech’s pioneering Kadcyla antibody-drug conjugate cancer treatment.

(Central District of California). Obtained favorable settlement of intellectual property claims brought by Yardi and antitrust counterclaims brought by Entrata in a dispute involving rental property management software.

(Northern District of California). Obtained a favorable settlement midway through a widely followed trade secret and patent infringement trial involving self-driving car technology.

(Southern District of New York). Obtained a favorable settlement in a dispute between McCartney and Sony Music over McCartney’s copyright reversionary rights in Beatles songs.

(Northern District of California). Won a defense jury verdict on a $100 million claim that VMware violated its license agreement with Phoenix by distributing Phoenix BIOS software with VMware’s virtualization platform.

(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.

(District of Delaware). Obtained a favorable settlement for Palo Alto Networks in a patent case related to firewall technology after the jury trial ended in a hung jury.

(Northern District of California). Represented Oracle in its first trial against Google in a widely publicized dispute involving the Java programming platform. The trial ended in a hung jury.

(Northern District of California; Federal Circuit). Obtained a $1 billion verdict for Apple against Samsung in case involving utility patents, design patents, and trade dress rights in the iPhone. Michael and his colleagues were awarded recognition as Litigators of the Week for this victory by The American Lawyer.

(District of Utah; Tenth Circuit). After a seven-year battle involving an arbitration, two trials, and two appeals, successfully concluded defense of Novell against billion-dollar claims brought by the SCO Group. SCO claimed that Novell’s Linux releases infringed SCO’s UNIX copyrights. Michael and his colleagues obtained a complete defense win for Novell. He was recognized as Litigator of the Week by The American Lawyer for this victory.

(Eastern District of Texas). Defeated a plaintiff’s claim of patent infringement involving National Semiconductor’s online circuit design tool on summary judgment.

(District of Delaware). Represented Abraxis BioScience in the defense of 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.

(Western District of Washington). Represented Autodesk in a 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.

(Northern District of California). Represented Autodesk in a trademark infringement action relating to protectability of Autodesk’s “DWG” mark and obtained consent judgment of trademark validity as part of the settlement.

(AAA/ICDR). Won a nearly $10 million award for the plaintiff in an ophthalmologic medical equipment dispute.

(Northern District of Illinois). Settled the case in the damages phase after liability was established under previous counsel in the resorbable polymer patent infringement action brought against client QLT, a biopharmaceutical company.

(Central District of California). Represented the UK-based defendant in a trade secret and material transfer agreement dispute involving stem cell technology. The case settled shortly before trial.

(Eastern District of Virginia; Federal Circuit). Prevailed on behalf of Yahoo! on a Federal Circuit appeal after winning and early motion for summary judgment of non-infringement in a patent infringement suit involving computerized fantasy football games. Successfully represented and currently representing Yahoo! in many other patent infringement actions.

(Southern District of California; Federal Circuit). Won affirmance in the Federal Circuit of a summary judgment victory on behalf of Think Outside in a patent infringement action involving the “Stowaway” portable keyboard.


IAM Patent 1000 2022

Ranked Nationally for Design Patent; California for Litigation