Michael A. Jacobs

Partner | San Francisco

mjacobs@mofo.com | (415) 268-7455

mjacobs@mofo.com
(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.

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. He defended Uber against Waymo’s autonomous vehicle trade secret claims. And the life sciences industry’s first and most successful biotechnology company looks to Michael when patent and licensing disputes arise. Michael co-founded and served as co-chair of the firm’s Intellectual Property Practice Group.

Chambers has called 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.” Michael is listed in Band 1 by Chambers USA 2021 in its California Intellectual Property: Patent Litigation category, which describes him as “highly client-focused and strategic.” Michael 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, then in 2012 for his defense of Novell in SCO v. Novell, and again in 2014 for his work on a billion dollar smartphone trial.

Michael’s work on several landmark cases has helped 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. Michael represented Novell in the widely reported SCO v. Novell Linux litigation, prevailing in a bench trial on Novell’s multimillion 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 Chiron in its hepatitis C virus protease litigation; Abraxis BioScience in a nanoparticle anticancer treatment dispute; QLT in its litigation with TAP Pharmaceutical involving the Eligard anticancer treatment; Genentech in its patent dispute with Phigenix concerning Genentech’s blockbuster drug, Kadcyla, and against Eli Lilly; and Washington University in a life sciences patent valuation dispute with the Wisconsin Alumni Research Foundation (WARF). He has also handled numerous high-profile arbitrations, several of which involved the interplay between arbitration and court proceedings.

Michael also achieved victories in several important pro bono cases. He was co-lead counsel for the 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 Jewish and Muslim individuals and organizations in a successful pre-election challenge to an anti-circumcision initiative slated for San Francisco’s ballot.

Michael routinely speaks on cutting-edge intellectual property issues. For example, he has participated for many years in the Federal Judicial Center–Berkeley Center for Law & Technology’s education program for federal judges.

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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.

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