Michael A. Stallman

Of Counsel | San Francisco

mstallman@mofo.com | (415) 268-6003 mstallman@mofo.com
(415) 268-6003

Michael Stallman serves as a strategic business advisor to IP-driven companies, assisting clients through all phases of IP development and protection. He has more than 30 years' experience in the areas of business counseling, strategic IP planning, patent evaluation and due diligence, patent licensing, and IP litigation. His expertise includes cross-border issues involving foreign and multinational parties, as well as foreign tribunals and patent offices.

Mr. Stallman handles a wide variety of technologies with special expertise in scientific and industrial laser systems, sensors, MEM’s devices, wafer inspection systems, ophthalmic treatment and diagnostic devices and aesthetic dermatology using lasers, lamps, and radio frequency treatment modalities. He has represented a broad range of medical device clients working on a variety of technologies, including implantable defibrillators, cardiac mapping, ultrasound imaging, shock wave therapy for treating calcified tissue, stent deployment, and stent design both for the heart region and in the brain.

Mr. Stallman has litigation experience in both U.S. and foreign tribunals and has participated in a number of trials. Leveraging his technical background with his extensive patent prosecution and trial experience, Mr. Stallman now plays an effective role in litigation bridging the divide between technical personnel at the client and the trial team. As an example, Mr. Stallman filed for and obtained for a client five patents related to the optical inspection of semiconductor wafers. He then was part of the trial team that litigated these patents before a jury against a foreign competitor. All five patents were found valid and infringed, and the competitor was barred from marketing its device in the United States.

Mr. Stallman also managed the successful defense of a claim for infringement of a European patent made against his client Coherent. The patent related to ablating materials with ultrashort laser pulses and was licensed by many companies in the industry. Coherent was sued for infringement in Germany. Mr. Stallman supervised local counsel defending the infringement suit and he managed a separate nullity case against the patent. The nullity court found the patent invalid and that decision was recently upheld on appeal by the Federal Court of Justice effectively ending the infringement action.

His adversarial practice also includes handling patent reexaminations before the USPTO. Through these reexamination proceedings, he has helped patent holders strengthen patents prior to licensing negotiations and possible litigation, as well as helped accused infringers attempt to invalidate alleged infringed patents.

Mr. Stallman is often retained to perform IP due diligence and investigate the strengths and risks of an acquisition target. In that role, he evaluates the strength of the patent holdings of the target and also studies the landscape of third-party patents to determine the level of risk to the acquirer. His extensive experience rendering legal opinions on a wide variety of patents has provided him with a comprehensive understanding of the patent landscape in a number of key optics and medical device fields.

Mr. Stallman has been responsible for negotiating the terms of many patent license agreements. He developed the template used by the laser industry to license the Gordon Gould "submarine" patents. These patents were filed back in 1959, but only began issuing in the 1980s. Patlex, Inc., was formed to monetize the patents. On behalf of his client Coherent, Mr. Stallman negotiated the first significant license agreement with Patlex. He was subsequently retained by a number of laser manufacturers to aid them in securing rights to the patent portfolio.

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