Michael A. Molano

Representative cases include:

• Lead trial counsel in three-day bench trial asserting inequitable conduct. Patent owner filed Petition to Revive patent based on “unintentional abandonment” after admitting in an email that the patent was “intentionally abandoned.” Case settled weeks after bench trial. (D. Del. 2021)
• Lead arbitration counsel against a claim for breach of light emitting diode patent license. Claimant sought declaratory relief that patent license was violated. After week-long arbitration with witnesses appearing virtually from three continents, arbitration panel entered final award in client’s favor. (ICC Arbitration 2020)
• Lead trial counsel against a claim for patent indemnity. Plaintiff sought over $26 million in damages but was only awarded a fraction of that amount ($4.7 million) by verdict after a three-week jury trial. (Cal. Sup. Court 2015)
• Lead trial counsel in patent infringement case related to ship emissions. Won summary judgment of patent non-infringement on all claims except one. Last claim invalidated at bench trial. (C.D. Cal. 2015) Affirmed on appeal to Federal Circuit.
• Lead arbitration counsel in assertion of a breach of contract action related to software. After 3-day Hearing, Arbitrator found breach of contract in favor of client and awarded a six figure award, not including attorneys’ fees and costs. (AAA Arbitration 2012)

Chambers USA ranks Mike as a leading intellectual property lawyer in California, stating that clients describe him as “very thorough and thoughtful.” Chambers also notes that he “knows the law, knows the technology and is very cost-effective.” Mike has also been recognized for his work in California by IAM Patent 1000, which describes him as a "bigwig" in IP and recommends him as “a smart choice for technically complex patent spats.” He is also described as “a dexterous technology-focused litigator" and “top-notch licensing negotiator” – predominantly for US and European-based entities – who is "known for his detail-oriented approach and great sense of humour.”

An electrical engineer, Mike has drafted and prosecuted patent applications in the semiconductor, software, hardware, and other electro-mechanical technologies. He has also served as IP deal counsel in corporate transactions.

• Represented a clean air engineering company in Central District of California in a declaratory judgment action against owner of exhaust capturing system patent: invalidated patent after bench trial.
• Represented an electronics company in Eastern District of Texas against an assertion by Plaintiff of a digital fingerprinting patent: favorable settlement.
• Represented a semiconductor company in Eastern District of Texas against an assertion by Plaintiff of wall plug power products: favorable settlement.
• Represented a semiconductor company in Delaware District Court against an assertion by Plaintiff of a power management patent: final judgment of non-infringement on claim construction; affirmed on appeal.
• Represented an electronics company in Massachusetts District Court against an assertion by Plaintiff of a high-energy particle accelerator patent:  defeated preliminary injunction motion.
• Represented a semiconductor company in Delaware District Court against an assertion by Plaintiff of a client/server data traffic patent:  favorable settlement.
• Represented an electronics company in California Central District Court in an assertion of patents related to manufacturing of optical information carriers:  won summary judgment.

Software

• Represented a software educational company in California Northern District Court and before the American Arbitration Association in an assertion of a breach of contract action related to electronic educational programs:  after 3-day Hearing, Arbitrator found breach of contract in favor of Mayer Brown client and awarded a six figure award, not including attorneys’ fees and costs.
• Represented a computer manufacturer in Florida Southern District Court against an assertion by Plaintiff of a biometric matching patent:  favorable settlement.

Semiconductor

• Represented an LED company in a 5-day arbitration before the International Chamber of Commerce with witnesses appearing virtually from three continents in a patent cross-license dispute.  The arbitration tribunal found in favor of Mayer Brown’s client in a final award.
• Represented an electronics company in California Central District Court in action alleging infringement of five patents relating to light emitting diodes:  confidential settlement.
• Represented semiconductor company in ITC Investigation under Section 337 of the Tariff Act relating to semiconductor fabrication methods:  resulted in a Final Determination that invalidated all relevant claims of a first patent and all but one claim of a second patent.
• Represented semiconductor company in ITC Investigation under Section 337 of the Tariff Act relating to silicon signature semiconductor technology:  resulted in determination of non-infringement and patent invalidity in favor of client.

Mechanical

• Represented solar company in asserting a solar panel mounting system patent against Defendants:  stayed pending Reexam.

Copyright

• Represented semiconductor company in California Northern District Court against claims for copyright infringement, breach of contract and fraud:  favorable settlement after winning summary judgment.

Trade Secret

• Represented semiconductor company in California state court in trade secret action relating to flash memory devices:  favorable settlement.

• Board of Directors, The Little School Pre-School, San Francisco, California (Board Member, 2000–2003; Secretary and General Counsel, 2000–2002) 
• San Francisco Bay Area IP Inn of Court, Master (past President and Executive Committee Member 2001-2006)