Michael N. Zachary
Michael is a board member for the Silicon Valley Chapter of the Licensing Executives Society. He is also a cellist who performs with two local orchestras and with area chamber groups.
Awards & Recognition
- Managing Intellectual Property Patent Star
- Managing Intellectual Property Trademark Star
- U.S. Court of Appeals, Federal Circuit
- U.S. Court of Appeals, Ninth Circuit
- U.S. District Court, Northern District of California
- U.S. District Court, Southern District of California
- U.S. District Court, Central District of California
- U.S. District Court, Eastern District of Texas
- U.S. District Court, Western District of Washington
- U.S. District Court, Eastern District of Washington
- U.S. District Court, District of Oregon
Presentations & Publications
- Speaker at the World IP Forum 2022, “Insights from the United States”
- Quoted in “$500M Oculus Verdict Could Spell High-Stakes Injunction Fight,” Law360 (February 2, 2017)
- Quoted in “Explained: Oculus and Zenimax Court Battle – The Story So Far, and Where It’s Going,” Wearable (January 17, 2017)
- Mentioned in “Volkswagen, Bentley Slam Signal IP’s Safety Patent Claims,” Law360 (October 7, 2014)
- Mentioned in “VW, Bentley Get Claims Pared in Car Safety Patent Row,” Law360 (September 24, 2014)
- Harvard Law School, J.D.
- Columbia University
Kabbash v. The Jewelry Channel. Represented The Jewelry Channel in a purported consumer class action suit alleging false advertising.
Signal IP v. Volkswagen Group of America, et al. Represented Volkswagen and Bentley in a suit for patent infringement related to “Side Assist,” seat sensors, and hybrid vehicles.
West View Research v. Audi, et al. Represented Volkswagen and Audi in a suit for patent infringement relating to vehicle “head units.”
JW Pharmaceutical v. PRISM Pharma Co., Ltd. Represented PRISM Pharma in a suit for alleged trade secret misappropriation relating to reverse peptide mimetics. Obtained dismissal of federal court action on the basis of lack of subject matter jurisdiction; obtained stay of related state court action.
Bradium v. Microsoft Corp. Represented Bradium Technologies in a suit for patent infringement relating to mapping technology. (D. Del.)
Geotag v. Pacific Bioscience Laboratories (dba Clarisonic). Represented Clarisonic in a suit for patent infringement relating to geolocation services over the internet. (E.D. Tex.).
Pegasus Development v. Wacom and Wacom Technology. Represented Wacom in a suit for patent infringement involving digital ultrasonic pens.
Natural Factors Nutritional Products v. Vanderhaeghe. Represented Natural Factors in a suit for trade dress and trademark infringement against former consultant to the company.
CollegeNET v. The College Network. Represented CollegeNET in a trademark infringement suit concerning use of trademarks as key words, and confusingly similar domain names.
Flexiworld Technologies v. Skype. Represented Skype in a patent case related to VOIP.
Wacom and Wacom Technology v. Hanvon et al. Represented Wacom in a suit for unfair competition, infringement of six patents related to digitizer circuitry, and false marking.
CollegeNET v. XAP. Represented CollegeNET in a false advertising and patent infringement suit related to online forms and internet technology. Obtained novel ruling that false promises regarding privacy practices could constitute a Lanham Act violation.
Soverain Software v. Amazon.com, et al. Represented Amazon.com in a patent case related to internet security and SSL.
Cordis Corp. v. Boston Scientific Corp. Represented Boston Scientific in a patent infringement suit relating to cardiac stents. Obtained defense jury verdict including a judgment that the patents were unenforceable for inequitable conduct. (Note: the inequitable conduct ruling was later reversed and remanded for further findings.)
- Patent licenses and cross-licenses
- Trademark licenses
- Manufacturing and supply agreements
- Purchase agreements
- Design and development agreements
- Software development agreements
- Collaboration/joint research agreements
- Non-disclosure agreements
- Software licenses, including two-party agreements, end user license agreements (EULAs), and SDK agreements
- Open source licensing
- Product evaluation agreements
- Standard Setting Organization By-Laws and IPR Policies