Michael A. Molano

Mr. Molano is a partner in the Intellectual Property practice group in the firm's Silicon Valley office.

Areas of Practice

Mr. Molano specializes in litigating intellectual property cases in federal courts and before the International Trade Commission. He is also a registered patent attorney with substantial experience in prosecuting patent applications in the electrical arts, as well as experience in drafting, negotiating and advising clients on IP aspects of corporate transactions.

Education

• J.D., Saint Louis University School of Law, 1993
• B.S., Electrical Engineering, Northwestern University, 1990

Admissions

• California
• U.S. Patent and Trademark Office

Languages

• Spanish

Patent (District Court and ITC)

Innovative Biometric Technology, LLC v. Lenovo (United States), Inc. and Fujitsu America, Inc. (S.D. Fla.) Representing Lenovo against an assertion by Plaintiff of a biometric matching patent:  currently pending.

Xpoint Technologies, Inc. v. Microsoft Corp., et al. (D. Del.) Representing Marvell Semiconductor, Inc. against an assertion by Plaintiff of a client/server data traffic patent:  currently pending.

Akeena Solar, Inc. et al. v. Zep Solar, Inc. et al. (N.D. Cal.) Representing Akeena Solar in asserting a solar panel mounting system patent against Defendants:  currently pending.

Cryptography Research, Inc. v. Visa Service International Association (N.D. Cal.) Represented Visa against an assertion of seven cryptography patents related to smartcards:  resulted in favorable settlement.

IpVenture v. Prostar Computer, et al. (C.D. Cal.) Represented Prostar (computer manufacturer) against an assertion of a patent related to methods for thermal and power management: resulted in favorable settlement after dismissal in the District Court in favor of client and then reversal and remand at the Federal Circuit.

Koninklijke Philips Electronics N V Et Al v. Poso Media Llc (C.D. Cal.) Represented Phillips in assertion of patents related to manufacturing of optical information carriers:  resulted in favorable summary judgment.

Koninklijke Philips Electronics N V Et Al v. Power Media Cd Tek Inc Et Al (C.D. Cal.) Represented Phillips in assertion of patents related to manufacturing of optical information carriers:  resulted in favorable summary judgment.

Digital Choice Of Texas, Llc v. Sichuan Changhong Electric Co., Ltd., Et Al (E.D. Tex.) Represented Coby Electronics Corporation against an assertion of patents related to methods of screening content:  resulted in favorable settlement.

Britesmile v. Discus Dental, et al. (N.D. Cal.) Represented Britesmile in assertion of two patents relating to a tooth whitening product and process:  resulted in favorable settlement.

NeoMagic, Inc. v. Trident Microsystems, Inc.(Appeal to Federal Circuit) Represented Trident on appeal in an action alleging infringement of two patents involving embedded memory semiconductors:  resulted in affirmance on appeal to Federal Circuit.

United Microelectronics Corp. v. Silicon Integrated Systems Corp. (N.D. Cal.) Represented SiS in patent infringement and trade secret case relating to semiconductor fabrication methods.

In the Matter of Certain Integrated Circuits, Processes for Making Same, and Products Containing Same (ITC Inv. No. 337-TA-450), Represented SiS 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.

In the Matter of Certain EPROMs and EEPROMs, Processes for Making Same and Products Containing Same (ITC Inv. No. 337-TA-395) Represented Macronix Semiconductor 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.

AMD v. Cypress Semiconductor (D.C. Del.) Represented AMD in patent infringement action relating to semiconductors in microprocessors, complex programmable logic devices and memory devices.

IPLearn, LLC v. Ask Jeeves, Inc. (N.D. Cal.) Represented IPLearn in patent action related to natural-language searching processes.

Electronics for Imaging, Inc. v. Compose Systems, Inc. et al. (N.D. Cal.) Represented Compose in patent action related to color management and processing between color devices.

Hilgraeve v. Symantec Corporation (E.D. MI) Represented Symantec in patent action related to antivirus software.

IBM v. Conner Peripherals (N.D. Cal.) Represented Conner Peripherals in patent action related to disk drive technologies.

Austria Mikro Systeme International v. Tegal Corporation (International Chamber of Commerce (ICC) arbitration)  Represented Tegal in arbitration relating to a patent indemnity claim:  resulted in favorable settlement.

Copyright

Intelligraphics, Inc. v. Marvell Semiconductor, Inc. (N.D. Cal.) Represented Marvell against claims for copyright infringement, breach of contract and fraud:  resulted in settlement after favorable decisions on summary judgment.

Trade Secret

Advanced Micro Devices, Inc. v. Hyundai Electronics America, Inc. (Santa Clara Superior Court) Represented AMD in trade secret action relating to flash memory devices:  resulted in favorable settlement.

Memberships

• San Francisco Bay Area IP Inn of Court, Current Barrister (past President and Executive Committee Member 2001-2006)
• American Youth Soccer Association Region 109 (Menlo Park/Atherton), Regional Commissioner (2009-present), Regional Coach Administrator (2005-2009)

Articles

"Who Has the Final Word on Patent Validity?  Collateral Estoppel and Patent Reexamination," Parallel Patent Litigation and Reexamination Proceedings 2007, Practising Law Institute, August 2007

"Litigating Assignor Estoppel Issues in Patent Cases," Fundamentals of Patent Prosecution Winter 2002, Practising Law Institute, (December 2002)

"In Re Echostar, Attorney-Client Privilege, and Work Product Immunity," Fundamentals of Patent Prosecution, Winter 2006 - A Boot Camp for Claim Drafting and Amendment Writing, Practising Law Institute, December 2006

"Patent Prosecution Basics for the Non-Specialist," Patent Basics for the Non-Specialist, Practising Law Institute, April 2005

"Key Issues in Trade Secret Protection," IP Value 2005: Building and Enforcing Intellectual Property Value - An International Guide for the Boardroom, Global White Page, January 2005

"Patent Litigation Basics for Patent Prosecutors," Fundamentals of Patent Prosecution, Winter 2003 - A Boot Camp for Claim Drafting and Amendment Writing, Practising Law Institute, December 2003

"Business Method and Software Patents," eBusiness and Insurance, CCH, Inc., (Volume I, Chapter 9, 2001)

Speeches

• Speaker, "Patent Basics for a Non-Patent Specialist," Stanford Law School, April 13, 2010
• Speaker, "Does The Sun Shine On Inventive Processes? U.S. Supreme Court Hears In Re Bilski," BrightTALK Web cast, October 8, 2009
• Chairman and Faculty Member, "Fundamentals of Patent Prosecution, A Boot Camp for Claim Drafting and Amendment Writing," Practising Law Institute, December 2001–2009
• Faculty, "Parallel Patent Reexamination and Litigation: The Latest Developments and Their Impact," Practising Law Institute, San Francisco; 2007-2008
• Faculty Member, "Understanding the Intellectual Property License," Practising Law Institute, December 2005 -2008
• Faculty, "Who Has the Final Word on Patent Validity? Collateral Estoppel and Patent Reexamination," Practising Law Institute, August 2007-2008
• Speaker, "Protecting Intellectual Property: Internal Audits of IP Infringement Issues," Berkeley Center for Law and Technology, University of California, Berkeley, Boalt Hall School of Law, February 2007
• Moderator and Faculty, "Nuts and Bolts of IP Law", CEB Courses in San Francisco, Sacramento and Santa Clara, January 2006
• Faculty, "Patent Prosecution Basics for the Non-Specialist," Patent Basics For the Non-Specialist, Practising Law Institute, April 2005 -2009
• Speaker, "Information Technology Issues for the Non-Technology Practitioner: A Primer," Hispanic National Bar Association Technology Conference, March 2005
• Speaker, "Protecting Intellectual Property: IP Audit," Minority Corporate Counsel Association CLE Expo, March 2005
• Faculty Member, "Patent Bar Review Course," Practising Law Institute, San Francisco, October 2004-2005
• Speaker, "Patent Litigation Tactics," Berkeley Center for Law and Technology, University of California, Berkeley, Boalt Hall School of Law, February 2004