Michael N. Zachary

Partner

(415) 426-4745
[email protected]
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Michael focuses his practice on intellectual property litigation and licensing, and regularly represents clients in patent infringement, trade secret, trademark and other intellectual property litigation cases. He also counsels clients on a variety of technology and intellectual property agreements, including design and development, manufacturing and supply, product evaluation, and patent and trademark license agreements. He has represented large, mid-size, and start-up companies based in the United States, Japan and Europe, including Volkswagen, Bradium, Skype, Amazon, Wacom, PRISM Pharma and Boston Scientific. In 2016 and 2017, he was recognized as a California “IP Star” by Managing Intellectual Property.

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

Court Admissions

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

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)

Education

Harvard Law School, J.D.
Columbia University

Bar Admissions

California
Washington

Litigation Experience

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.)

Agreement Experience

Patent licenses and cross-licenses
Trademark licenses
Manufacturing and supply agreements
Purchase agreements
Design and development agreements
Software development agreements
Collaboration/joint research agreements
Website terms of use and privacy policies
Non-disclosure agreements
Software licenses, including two-party agreements, end user license agreements (EULAs), and SDK agreements
Open source licensing
Product evaluation agreements
Warranties
Standard Setting Organization By-Laws and IPR Policies

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