Michael E. Flynn-O’Brien
Michael Flynn-O’Brien is a trial lawyer who represents companies and individuals in complex technical and intellectual property disputes involving claims of trade secret misappropriation, patent infringement, trademark infringement, unfair competition, and breach of contract. He has litigated cases in state, federal, and arbitral venues around the country, in matters relating to robotics, drones (or UAVs), autonomous navigation, materials science, audio algorithms, network transceivers, semiconductors (memory, ethernet, testing sockets), mobile devices, internet gaming, web technologies, server systems, and enterprise security software. In litigating these cases, he draws from seven years of prior experience as a software developer in web-stack technologies.
Michael also advises clients on trademark enforcement, brand protection, and domain names, including helping clients develop proactive policies and enforcement programs for the physical and virtual spaces in which modern companies interact with consumers.
In addition, Michael advises various clients in business litigation and arbitration, with particular emphasis on complex commercial disputes, including venture capital investments and early-to-growth stage startups, and cross-border investments. In that capacity, he has represented companies, founders, investors, and sovereign states in proceedings around the world, including at the World Bank’s International Centre for Settlement of Investment Disputes (ICSID), London Court of International Arbitration (LCIA), the Stockholm Chamber of Commerce (SCC), the American Arbitration Association (AAA/ICDR), and the Judicial Arbitration and Mediation Services (JAMS).
Michael has been named a “Rising Star” in IP Litigation by Super Lawyers six times.
Michael enjoys flying drones with his daughter, and camping throughout California.
- Rising Star in IP Litigation (2015, 2016, 2017, 2018, 2019, 2020), Super Lawyers
- “Doing Business in… 2023″. For Chambers and Partners: Trends and Developments, June 2023
- Columbia Law School, J.D., Harlan Fiske Scholar
- Rice University, B.A. Economics
- New York
- District of Columbia
- U.S. Court of Appeals for the Federal Circuit
- U.S. Court of Appeals for the Ninth Circuit
- U.S. District Court, Northern District of California
- U.S. District Court, Eastern District of California
- U.S. District Court, Central District of California
- U.S. District Court, Eastern District of Texas
- Superior Courts of California (statewide)
- U.S. District Courts in California (statewide), Delaware, District of Columbia, Massachusetts (Boston), New York (New York City), Pennsylvania (Pittsburgh), Texas (Houston, Waco, Marshall, Sherman), Washington (Seattle)
- International Trade Commission (Washington, D.C.)
- U.S. Court of Appeals for the Federal Circuit (Washington, D.C.), Ninth Circuit (San Francisco)
- ICSID (Washington, D.C.), AAA/ICDR (New York), LCIA (London), SCC (Stockholm/Paris), JAMS (San Francisco)
Theta IP, LLC v. Samsung Electronics Co., Ltd.
BDIP successfully asserted core mobile phone battery savings patents invented by world-renowned Columbia Professor Yannis Tsividis against Samsung in the Western District of Texas. After defeating the dozen-plus dispositive motions that Samsung filed throughout the case and in pretrial proceedings, BDIP achieved a very favorable resolution on what was to be the first day of trial, as the jury was en route to the courthouse for jury selection.
KI Metal Co., Ltd. et al. Michael Kors (USA), Inc. et al. Representing a family-owned manufacturer of metal accessories for the fashion industry in a patent infringement case against former customer Michael Kors, alleging direct copying of KI Metal’s patented eyelets by Michael Kors and subsequent use in Michael Kors-branded handbags worldwide.
Johnstech International Corp. v. WinWay Technology Co. Ltd., et al. Represented a leading supplier of integrated circuit (IC) testing solutions, against claims of patent infringement in a four-patent case brought by competitor Johnstech.
Diatek Licensing LLC v. Udemy, Inc. Represented a leading and publicly-traded online course provider against claims of patent infringement in a two-patent case related to streaming video technologies.
BiTMICRO LLC Intel Corporation / BitMICRO LLC v. KIOXIA Corporation, et al. Representing BiTMICRO LLC in patent infringement actions against Intel Corporation and KIOXIA Corporation in the Western District of Texas relating to NAND flash memory and FPGAs, including structures, memory controllers, and power management.
Theta IP LLC v. Samsung Electronics Corp., et al. Represented Theta IP in a patent infringement action against Samsung in the Western District of Texas relating to technology invented by Columbia Professor Yannis Tsividis.
Virentem Ventures, LLC d/b/a Enounce TiVo Corp., et al. Represented Virentem in a patent infringement case in the District of Delaware related to the use of pitch-corrected audio in audio/audio-visual systems.
Certain Unmanned Aerial Vehicles & Components Thereof (Autel Robotics USA) Represented Autel in a patent infringement case at the International Trade Commission related to design, structure, and operation of consumer drones (or UAVs). Secured rulings of validity and infringement against DJI, the world’s largest maker of consumer drones, as well as cease-and-desist and exclusionary orders prohibiting the import of DJI’s most popular products.
SZ DJI Technology Co. Ltd., et al. v. Autel Robotics USA LLC, et al. Represented Autel Robotics in a patent infringement case (design and utility patents) in the District of Delaware related to the design, structure, and operation of consumer drones (or UAVs).
Certain Semiconductor Devices & Consumer Audiovisual Products (Broadcom) Represented Broadcom in a patent infringement case at the International Trade Commission related to multimedia data processing technology used in “smart” televisions and related devices.
Amgen Inc., et al. v. Sanofi, et al. Represented Sanofi and Regeneron in a patent infringement case in the District of Delaware related to monoclonal antibody therapies targeting PCSK9 for treating/lowering LDL cholesterol.
T-Mobile USA Inc. v. Huawei Device USA Inc., et al. Represented Huawei Technologies against allegations of trade secret misappropriation and breach of contract in the Western District of Washington (Seattle) related to a smartphone-testing robot (“Tappy”). At trial, convinced jury that T-Mobile’s trade secret allegations were meritless, or at least valueless, resulting in a jury verdict of zero damages for the trade secret claims.
Quintel Technology Ltd. v. Huawei Technologies USA, Inc., et al. Represented Huawei against allegations of trade secret misappropriation, breach of a contract (NDA), fraud, and correction of patent inventorship, and other claims in the Eastern District of Texas. Matter settled favorably in the middle of the jury trial.
SanDisk Corporation v. SK Hynix Inc. et al Represented SK Hynix against allegations of trade secret misappropriation in Santa Clara Superior Court (California) related to process technology used to manufacture NAND flash memory.
Confidential Counseling Matters: Semiconductors, Material Science, Consumer Devices Multiple representations: counseled leading semiconductor manufacturer regarding managing trade secret risks and liability with respect to potential joint-venture; counseled materials manufacturer regarding hiring and onboarding former executive of competitor; counseled consumer device manufacturer regarding recruiting and hiring sales staff from competitor.
Loka, Inc. v. Loka Labs, Inc. Represented Loka, Inc. in enforcing its registered “LOKA” trademarks against Loka Labs, Inc. regarding uses of “Loka” in its corporate branding, on social media, and on its applications and websites.
Confidential Counseling Matters. Multiple representations: counseled clients regarding brand strategy, trademark applications, and disputes with parties in the same or adjacent industries; negotiated resolutions, including exits.
Confidential Founder/Investor Disputes in Startups Represented founders and investors in disputes with co-founders, investors, and former employers related to startups in the SaaS, big data, pharmaceutical, and mobile advertising industries. Disputes range from investment terms, management and control, vesting schedules, and more.
Multiple Retail and E-Commerce Clients: Website/Mobile App Accessibility Claims Represented dozens of retail and e-commerce clients in addressing accessibility claims directed to their websites and mobile apps under the Americans for Disabilities Act (ADA) and its state law equivalents in California (Unruh), New York (NYHRL), and elsewhere.
Valero Refining Company-California v. Pacific Gas & Electric Company Represented PG&E against allegations of breach of contract and demands for business interruption losses and damage relating to a power outage at refinery.
Confidential JAMS Arbitration: Web Technologies. Represented leading CPG marketing company in breach of contract dispute with competitor regarding web technologies.
Türkiye Petrolleri Anonim Ortaklığı (TPAO) Kazakhstan, ICSID Case No. ARB/11/2 Represented state-owned oil company in investment arbitration proceedings against the Republic of Kazakhstan under the ICSID convention.
United States of America v. Canada, LCIA Case No. 111790 Represented Canada in international arbitration proceedings initiated by the United States under the Softwood Lumber Agreement related to the mountain pine beetle infestation and timber pricing policy in British Columbia. Resulted in arbitration award for Canada on all claims.
RosInvestCo UK Ltd. The Russian Federation, SCC Case No. V079/2005 Represented UK investor in expropriation claim against the Russian Federation in BIT arbitration in Stockholm and Paris. Secured the first arbitration award holding that the Russian measures taken against the Yukos Oil Company amounted to unlawful expropriation.
Confidential Due Diligence of Investment Treaty Protections. Counseled companies and investors on investments in foreign countries, including analysis and evaluation of investment treaty protections and potential claims.