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 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 represented Uber, defending against Waymo’s autonomous vehicle trade secret claims. The life sciences industry’s first and most successful biotechnology company looks to Michael when patent disputes arise. He co–founded and currently co–chairs our Intellectual Property Practice Group.

Michael’s 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 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 Tenth 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 to the above, Michael has represented leading life sciences companies in their cutting‑edge litigation, including Chiron in its HCV protease litigation, Abraxis in its nanoparticle anticancer treatment dispute with Elan Pharma, QLT in its litigation with TAP Pharmaceutical involving the Eligard anticancer treatment, and Genentech in its patent dispute with Phigenix concerning Genentech’s blockbuster drug Kadcyla. He currently represents Genentech in its patent litigation against Eli Lilly and Washington University in St. Louis in a life sciences patent valuation dispute against WARF. He has also handled numerous high–profile arbitrations, several of which involved the interplay between arbitration and court proceedings.

Michael also has 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.

Both clients and the legal community recognize Michael’s skills both in the courtroom and as counsel to his clients. 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.”

In the broader legal community, Michael frequently 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.

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Experience

  • (Northern District of California). Successfully defended Uber against far–reaching preliminary injunction motion. Obtained favorable settlement after four days of jury trial.

  • (Southern District of New York). Represented Paul McCartney in a landmark Copyright lawsuit against publisher Sony/ATV regarding the rights to hundreds of Beatles songs. The case was resolved in a settlement and avoided a legal battle that would have had wide ramifications for the music industry.

  • Co–lead counsel in a high–profile smartphone case, asserting claims of design patent, utility patent, and trade dress infringement and leading to a jury verdict of over $1 billion.

  • (Northern District of California). Won a jury verdict, clearing VMware of all claims in a copyright and breach of contract trial involving input/output software.

  • (Northern District of California). Secured summary judgment of non–infringement and attorneys' fees for Genentech in a patent suit over the mechanism of action of its breakthrough breast cancer drug Kadcyla.

  • (Northern District of California) Represents Nevro Corp., a spinal cord stimulation medical device company, in a patent infrigement suit against Boston Scientific.

  • (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 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)

  • (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.

  • (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.

  • (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.

  • (District of Delaware). Lead counsel for Washington University in a dispute involving proper valuation of a co–owned patent covering a blockbuster Vitamin D kidney disease treatment.

  • (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.

  • (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.

  • (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.

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

  • (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.

  • (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.

  • (Central District of California). Represented U.K.–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 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.

  • (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.

  • (Northern District of California). Defeated plaintiff on summary judgment in patent infringement lawsuit related to the Netflix DVD “queue.”

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